18th Aug 2014
By Michael Berkens - thedomains.com
TV Sundram Iyengar and Sons Limited of Madurai of India represented by DePenning & DePenning, just lost its attempt to grab the 17 year old domain name TVS.com
The domain owner P.A. Gordon was represented by ESQwire.com which won its second UDRP of the day, Congrats to Ari and Jason.
The panel had a very good discussion of latches and while the decision did not rest on latches the delay in 17 years was not something the panel could ignore.
The panel spent quite a bit of time discussing the issue of Reverse Domain Name Hijacking and while the ultimately did not make such a finding, the panel did criticize quite harshly the Complainant for the “repeated assertions in the Complaint, seemingly without any evidentiary basis, that the Respondent is engaging in illegal behaviour or attempting to commit fraud. This language is unnecessary and not condoned by the Panel.”
In other words the Complainant make statements about the domain holder which were simply untrue.
On that basis, I’m going to recommend to Mr. Rick Schwartz that he add this case the Complainants and their counsel to the Domain Hall of Shame.
Here are the highlights of the 3 member panel decision of Nicholas Smith, Harini Narayanswamy and Neil Brown Q.C.
“The Complainant is the holding company of the TVS group and is an automotive dealership and distributorship company in India.
The Complainant was established in 1911 and is named after its founder Thirukkurungudi Vengadam Sundram Iyengar.
The Complainant has more than 150 outlets and sells approximately 6,000 vehicles and services around 600,000 vehicles per annum. Furthermore the Complainant also distributes spare parts in India. The TVS group employs more than 40,000 people worldwide and has an annual turnover in excess of $4 billion.
The Complainant owns the registered trademark no. 109706 for a figurative mark consisting of the letters “TVS” inside a rhombus (the “TVS Mark”).
The TVS Mark was first registered on April 25, 1945 in India for goods in class 11, including the marketing and providing of goods and services for others via websites and apps. The Complainant has also registered other variants of the TVS Mark including registrations in the United Kingdom of Great Britain and Northern Ireland in 2012 and 2013.
The Domain Name was created on June 5, 1997.
It currently resolves to a website (the “Respondent’s Website”), which is a parking page with a number of what appear to be “pay-per-click” links including links for various types of televisions, such as “flat-screen televisions” and “plasma screen televisions”.
The Respondent’s website also contains the statement “BUY THIS DOMAIN This domain may be for sale. For more information please contact…”.
The Respondent’s Website does not refer to the Complainant in any way.
The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered (in 1997) the Respondent registered it in contemplation of the Complainant.
There is no evidence that at the time of registration the reputation of the TVS Mark extended beyond India, or that the Respondent, who appears to have engaged in a pattern of registering 3-letter marks, registered it in contemplation of the Complainant. The evidence before the Panel strongly suggests that the Respondent has not used the Domain Name to target the Complainant or in contemplation of the Complainant; rather the advertisements on the Respondent’s Website almost exclusively relate to televisions, an abbreviation of which is “TVs”.
To the extent that the Respondent’s Website has made reference to the Complainant’s products the Panel accepts that such use is not significant compared to the considerable evidence that the Respondent’s website primarily contains advertisements relating to televisions.
Accordingly there is no material before the Panel which would lead to a conclusion that the Respondent lacks a right or legitimate interest in the Domain Name.
However, during the 17 years the Domain Name has been held by the Respondent, the only evidence of any apparent use of the Domain Name is for a pay-per-click advertising service, not for any business that offers goods or services referable to the Domain Name.
Given the Panel’s finding that the Respondent has not registered and used the Domain Name in bad faith (see below), the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy.
The Domain Name has been registered for 17 years.
“The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration”. AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011.
The only explanation for the Complainant’s delay in filing a complaint about the Domain Name appeared to be the fact that Indian companies have only paid attention to domain name issues in the past 5 years, a fact that conflicts with its repeated assertions that the Respondent knew of the Complainant in 1997.
Although the Panel’s decision in this case does not rest simply on the passage of time between registration of the Domain Name and the Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trademark owners from registering a corresponding domain name.
Rather, it appears that the Respondent has registered a number of domain names that correspond to 3-letter acronyms in the early days of the Internet. Such conduct does not imply that the Respondent was registering domain names to prevent trademark owners from registering corresponding domain names, rather the Panel accepts the Respondent’s evidence that he registered them for the inherent value in the short domain names. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor as the Complainant and the Respondent are not competitors.
The Panel finds that the Complainant has not satisfied the burden of proof to show that either:
a) the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website; or
b) that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant.
Firstly, the Domain Name has been registered for more than 17 years, and there is no evidence that the Respondent has ever attempted to sell the Domain Name to the Complainant (as opposed to a general offer to sell the Domain Name).
An offer to sell a Domain Name, by itself, is not evidence of bad faith, rather it has to be accompanied by evidence that the Domain Name was registered or acquired primarily for the purpose of selling to the Complainant or a competitor of the Complainant.
The Panel finds that the Complainant has not established that the Respondent was aware of it at the time it registered the Domain Name.
There is no evidence before the Panel that the Respondent was aware of the Complainant in 1997, such as extracts from the Respondent’s Website close to the time of registration that refer to the Complainant or communications from the Respondent. Nor has the Complainant established that the TVS Mark was so well known that the Respondent must have been aware of it and registered the Domain Name in contemplation of it.
In fact there is no evidence that the Complainant had any presence outside India in 1997, or indeed any time prior to 2012.
There is no other evidence suggesting that the Complainant should have been aware of the Respondent.
The Panel accepts the Respondent’s argument that in 1997, it would not have been possible for the Respondent to have searched the Indian Trademark database (or indeed any trademark database) online, or search for the Complainant on the Internet:
It is unclear if the Complainant had an Internet presence in 1997 and in any event search engines, such as Google, did not exist then. In short, absent a particular connection with India, or the Complainant’s industry (neither of which is in evidence), it is not clear how the Respondent could possibly be aware of the Complainant at the time he registered the Domain Name.
In certain cases UDRP panels have inferred that a domain name was registered in bad faith if there is no explanation, or other logical reason for the registration of the domain name other than to take account of any confusion with the complainant. Such cases often arise if the complainant’s trademark is a coined word. This is not such a case. The Respondent has given evidence of his reason for registering the Domain Name, namely because of its inherent value as a three-letter .com domain name and because it is commonly understood to be the short form for “televisions” or “T.V.s”. This evidence is supported by the fact that in 1997 the Respondent registered other three-letter domain names and because the Domain Name has been used to host advertisements for televisions. The Panel finds this evidence more persuasive than the submission by the Complainant that the Respondent, who is based in the United States, registered the Domain Name to target the Complainant, despite the fact that, by its own admission, the Complainant had no interest in the Domain Name until 2013.
In this case, there is insufficient evidence for the Panel to reach a conclusion that the Complainant had such a reputation in its TVS Mark in 1997 that the registration of the Domain Name was in contemplation of the Complainant, rather than for the inherent qualities of the Domain Name.
Furthermore, given the fact that the Domain Name consists of a three-letter word commonly used as an abbreviation for “television”, it is highly likely that the Respondent registered the Domain Name for a purpose other than to take advantage of the confusion between the TVS Mark and the Domain Name.
As such the Complainant has not satisfied its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that the Respondent registered the Domain Name in bad faith.
The Respondent, in its Response also raises the question of laches.
The Panel notes that the Domain Name has been registered for 17 years, during that time the Complainant has been an active business.
This Panel’s view is that delay in filing a complaint is not an automatic bar to a complaint, but nor can it be ignored, for all the facts must be taken into account in all UDRP proceedings and a decision made in the light of all the circumstances of the individual case.
In the present proceeding the Panel does not make a finding as to whether the Complainant is barred from commencing or succeeding in the proceeding under the ground of Laches.
This is for two reasons.
Firstly as the Panel has found that the Respondent has not registered and used the Domain Name in bad faith and the Complainant therefore cannot succeed on the merits it is not necessary to make finding. Secondly the Panel finds the Complainant’s explanation that it has only been aware of the existence of the Domain Name since 2013 as it was when the Complainant became interested in acquiring the Domain Name plausible. However the Panel notes the contradictory nature of the Complainant’s submissions, namely that the Respondent registered the Domain Name in 1997 in bad faith to cash in on the reputation of the Complainant, yet the Complainant itself did not even consider it necessary to obtain a domain name that reflected the TVS Mark until 2013 or shortly beforehand.
E. Reverse Domain Name Hijacking
In the view of the Panel this is a Complaint which has a number of significant issues.
The Domain Name in question was registered in 1997.
There is very little evidence presented in the Complaint that suggests the Domain Name was ever targeted at the Complainant.
Rather the content of the Respondent’s Website suggests that the Domain Name resolved to a generic pay-per-click website, with most advertisements relating to televisions or “TVs” which reflect the Domain Name.
The Complainant is a well-established company and no doubt has a significant reputation, but it appears, on the evidence before the Panel, that that reputation is limited to the Indian subcontinent. In particular, it is unclear if the Complainant had any reputation outside India in 1997, at the time of the registration of the Domain Name, let alone that the TVS Mark was so well-known that the Respondent’s registration must have been made with the TVS Mark in mind.
Despite the weaknesses in its position, the Complaint is replete with numerous assertions that the Respondent engaged in illegal or fraudulent behaviour.
Examples of such assertions include:
“The respondent wrongfully and fraudulently adopted and registered the impugned domain name www.tvs.com to utilize the name and reputation attached to the well-known mark ‘TVS’ without having any rights thereto and in spite of having knowledge about the complainant and the reputation associated with ‘TVS’.”
“The facts and circumstances in the present case prove beyond doubt that the Registration of the impugned Domain name by the Respondent amounts to “passing off” with a manifest intention to commit fraud to mislead innocent and gullible customers by resorting to unfair and dishonest trade practices.
“The conduct of the respondent leaves no doubt as to its unscrupulous motive and illegal intentions and the Complainant is apprehensive that the respondent is in active search of an assignee of the impugned domain name and would sell the same and make illegal profit.”
While acknowledging that a party in a UDRP proceeding has the right to present its case in any manner it sees fit, the Panel is concerned by the repeated assertions in the Complaint, seemingly without any evidentiary basis, that the Respondent is engaging in illegal behaviour or attempting to commit fraud. This language is unnecessary and not condoned by the Panel.
While noting that the Complainant’s case has significant weaknesses and that its conduct in making numerous unsupported assertions of fraud and illegal behaviour is not condoned by the Panel, the Panel does not make a formal finding of Reverse Domain Name Hijacking.
This is not a case where the complainant’s mark post-dates the registration of the domain name, or where it is immediately obvious that the respondent used the at-issue domain name as part of a bona fide business (in particular the Panel acknowledges that the Respondent’s Website has referred to the Complainant’s products).
The Panel does not find that the Complaint was brought in bad faith.
Nevertheless the Panel remains concerned at the decision to commence proceedings in such circumstances and the unsupported assertions contained in the Complaint.