BODIS

Indian sarees : RDNH finding in Hakoba.com UDRP

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RDNH finding for Hakoba.com

Hakoba.com was registered in 1998 and for almost 20 years it has been the primary source of income for its owner.

Mukesh Shah of Floral Park, New York, operates Hakoba.com to sell saris made in India.

Hakoba Lifestyle Limited of Mumbai, India, filed a UDRP against the owner of the domain, along with two other domains, hakobasaree.com, and hakobasarees.com.

Saree is an alternate spelling of sari, the colorful garment traditionally worn by Indian women.

According to the UDRP:

The Complainant invented the name “Hakoba” and first started using it in India in 1955. The Complainant has consistently used this term to advertise its goods and services.

The Complainant has owned a registered trade mark in India since 1961.

The mark HAKOBA is well known and exclusively associated with the Complainant. The Complainant has invested significant resources in establishing its rights in the name “Hakoba” and possesses substantial and valuable goodwill therein.

The Respondent rejected these statements, pointing out the following:

The Respondent’s use of the expressions “hakoba” and “hakoba saree” pre-dates registration of the disputed domain names by several years. Newspaper cuttings and other documents dating back to 1998 demonstrate use of the terms by various companies of the Respondent as well as the generic nature of those terms.

The Complainant had no registered or common law trade marks when any of the disputed domain names were registered. The only registered trade mark asserted by the Complainant was issued in 2015, 17 years after registration of the disputed domain name <hakoba.com>.

Furthermore, the word “hakoba” has a specific generic meaning:

The Respondent says that “saree” is a generic term meaning either a dress worn by Hindu women or simply embroidery and that “hakoba” in Gujarati means “good” or “fine”. He maintains that the combination of the two, “hakoba saree”, is also a common generic term, meaning simply “fine embroidery” or “good dress” and that that was the reason that the Respondent originally selected the disputed domain names.

Adam Taylor, sole panelist at the WIPO, found no bad faith in the use or registration of the domain Hakoba.com; he also delivered a finding of Reverse Domain Name Hijacking:

“In particular, the Complaint has failed by a large and somewhat foreseeable margin; in the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one or more of the essential UDRP elements. The Complainant’s representatives quoted extensively from UDRP case law and the Panel thinks it unlikely that they were unaware of the need to provide evidence to support their key assertions including as to the extent and history of the Complainant’s alleged use of its mark.”

For the full text of this UDRP decision, click here.


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