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Reverse Domain Name Hijacking finding in Ceate.com #UDRP

ZFBot

RDNH finding.

The Hong Kong based registrant of the domain Ceate.com was taken through the UDRP process at the WIPO.

The Indian Complainant, CEAT Limited of Mumbai, India, asserted that their mark for CEAT is famous.

The panel delivered a finding favoring the Respondent:

“The Panel notes that the Complaint is very weak and that the Complainant, being represented in this case, should have known that it could not demonstrate that the Respondent registered and used the disputed domain name in bad faith.”

Accordingly, the slapped the Complainant with a finding of Reverse Domain Name Hijacking.

Full details on the UDRP decision for Ceate.com follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CEAT Limited v. DNS Administrator, Cykon Technology Limited
Case No. D2018-2339

1. The Parties

The Complainant is CEAT Limited of Mumbai, India, represented by DePenning & DePenning, India.

The Respondent is DNS Administrator, Cykon Technology Limited, Kowloon, Hong Kong, China, represented by Muscovitch Law P.C., Canada.

2. The Domain Name and Registrar

The disputed domain name <ceate.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2018. On October 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. On November 12, 2018, the Respondent requested an extension to file a Response. On November 13, 2018, the Center granted the automatic 4-day Response extension until November 18, 2018. On November 14, 2018, the Respondent requested an additional 3-day extension to file a Response. On November 16, 2018, the Center granted the Response extension until November 21, 2018. The Response was filed with the Center November 21, 2018.

The Center appointed Luca Barbero, Vinod K. Agarwal and The Hon Neil Brown Q.C. as panelists in this matter on December 14, 2018. 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.

On January 2, 2019, the Decision due date was extended to January 14, 2019.

4. Factual Background

The Complainant is a tyre manufacturer based in India, which traces back its history to 1924, when its predecessor in interest and title, CEAT S.p.A., was established in Turin, Italy.

The Complainant manufactures tyres for passenger and commercial vehicles and motorcycles under the trademark CEAT, which is the acronym for “Cavi Elettrici e Affini Torino” i.e., “Electrical Cables and Allied Products Turin”.

As a part of its marketing campaign, the Complainant launched the CEAT Cricket Rating in 1995 and the CEAT International Cricket Rating Awards, an annual event to recognize excellence in international cricket.

The Complainant’s annual turnover in the year 2010 – 2011 was approximately INR 3,529.14 Crores, whilst the Complainant’s advertisement expenditure for the promotion of its goods and services in the year 2010 – 2011 was around INR 44.86 Crores.

The Complainant has received various awards from trade associations and committees, such as the Reader’s Digest Trusted Brand Gold Award in 2009, the Employer Branding Award for Excellence in Training by the Asia Pacific HR congress for the year 2007-08, the National Centre for Quality Calibration (NCQC) Distinguish Award for the years 2004 and 2006 and the CCQC Mumbai Chapter Distinguish Award in 2007.

The Complainant relies on the following trademark registrations, of which it submitted trademark registration certificates as Annex 8 to the Complaint:

– Indian trademark registration No. 204251 for CEAT (word mark), registered in the name of the Complainant’s predecessor in right and interest Ceat Gomma Società per Azioni, filed on August 17, 1961, in class 12;

– Indian trademark registration No. 466079 for a figurative mark consisting of the words CEAT and BORN TOUGH with device elements, filed on January 14, 1987 and registered in the Complainant’s name, in class 12;

– Indian trademark registration No. 561135 for a figurative mark consisting of the words RHINO CEAT and BORN TOUGH with device elements, filed on October 30, 1991 and registered in the Complainant’s name, in class 12;

– Indian trademark registration No. 605276 for CEAT (figurative mark), filed on August 27, 1993, and registered in the Complainant’s name, in class 12;

– Indian trademark registration No. 1678126 for CEAT (figurative mark), filed on April 21, 2008 and registered in the Complainant’s name, in class 12.

The Complainant provided also evidence of ownership of additional trademark registrations including CEAT in Sri Lanka and Viet Nam.

The Complainant is also the owner of several domain names incorporating the trademark CEAT, including <ceatltd.com>, registered on May 11, 2000, <ceat.in>, registered on February 10, 2005, and <ceattyres.in>, registered on March 9, 2006.

The Complainant obtained the transfer of the domain name <ceat.com> from a prior owner following the filing of a UDRP complaint in 2011 (CEAT Limited, CEAT Mahal v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, WIPO Case No. D2011-1981).

The disputed domain name <ceate.com> was registered on June 17, 2010, and is pointed to a parking page with generic sponsored links where it is stated that the disputed domain name may be for sale.

5. Parties’ Contentions

A. Complainant

The Complainant states that, by virtue of its very nature – being an invented word – and of the priority in adoption, long, continuous, uninterrupted and extensive usage of the trademark CEAT since at least 1924, its trademark CEAT has acquired distinctiveness, is well-known and associated exclusively with the Complainant and its business.

The Complainant contends that the disputed domain name is identical to its trademark CEAT. The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name for the following reasons:

i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark CEAT or to apply for any domain name incorporating said trademark;

ii) the Respondent has not made any legitimate offering of goods or services under the trademark CEAT through the disputed domain name;

iii) since the Complainant’s trademark CEAT is an invented word, there could be no plausible explanation for the use of the disputed domain name by the Respondent other than to misappropriate the reputation of the Complainant’s trademark and divert traffic from the Complainant’s websites.

The Complainant also states that the Respondent registered and is using the disputed domain name in bad faith because:

i) the Respondent had constructive notice of the Complainant’s rights in the trademark CEAT by virtue of the Complainant’s well spread reputation, use and registrations;

ii) a respondent should have known of a complainant’s trademark if it is shown to be well-known or in wide use on the Internet or otherwise;

iii) the very use of a domain name by someone with no connection with the Complainant suggests opportunistic bad faith;

iv) the Respondent has not made any legitimate use of the disputed domain name and has merely redirected the users to various third-party websites including the Complainant’s website “www.ceat.com”. This circumstance would further confirm that the Respondent is “merely making dishonest gain by riding on the repute associated with the Complainant”;

v) today, business transactions are primarily being carried out only through Internet addresses rather than street addresses or post boxes or even faxes. Hence, the Complainant concludes that “it becomes critical that unscrupulous individuals are not allowed to usurp well-known trademarks and domain names to unfairly benefit from such act”.

B. Respondent

The Respondent denies all the Complainant’s contentions and states that, although the Complainant alleges that it is “one of the most well-known tyre manufacturers in the world”, its evidence of alleged renown is limited to India and the Complainant submitted copies of trademark registrations only for India, Sri Lanka, and Viet Nam, thus it is highly questionable and entirely unproven whether the Complainant has any significant reputation outside of India, let alone where the Respondent is located, i.e., Hong Kong.

The Respondent also submits that, despite the fact that the Complainant has trademark rights in CEAT in connection with tyres, it has no monopoly over this term since it is widely used by third parties worldwide and indeed there are numerous third parties that lawfully use the name “Ceat” for a variety of unrelated purposes without any license or authorization being required from the Complainant.

The Respondent highlights that the disputed domain name and the Complainant’s trademarks are plainly not identical nor confusingly similar, in light of the addition of the letter “e” to the trademark CEAT.

The Respondent informs the Panel that it is a corporation incorporated pursuant to the laws of Hong Kong which is engaged in the import and sale of consumer goods from China to the Hong Kong market and also invests in non-infringing domain names, having registered also other numerous (80) random five-letter domain names not corresponding to any known trademark, trusting that they could be of interest to someone looking for a unique domain name to adopt as a brand.

The Respondent states that it never solicited the Complainant to purchase the disputed domain name and never used the disputed domain name for anything that infringed the Complainant’s rights, such as for tyre or automobile related ads or content. It submits, as Annex H to the Response, DomainTools.com’s historical screenshots showing that, throughout its registration, the Respondent exclusively used the disputed domain name for contextual advertising specifically related to the closest imputed meanings and relevance of the term “ceate”, such as advertising related to “crates” or “create”.

As to the screenshots of the Respondent’s website submitted by the Complainant, showing references to the Complainant’s trademark and tyre-related products and services, the Respondent asserts that such content appears to be search engine results for the term, “ceat tyre company”, i.e., that the Complainant intentionally typed into the search bar of the website the words “ceat tyre company” in order to show such results.

The Respondent further states that, in light of the fact that the disputed domain name is an entirely made-up word that has no known meaning, it would not have occurred to the Respondent to require any permission from the Complainant, even if there had been some reason to be aware of the Complainant.

The Respondent states that its evidence, corroborated by its other contemporaneous registrations of comparable random five-letter invented words, demonstrates that the Respondent with good and lawful intent invested in the disputed domain name to potentially sell to a third-party new entrant into the marketplace who wished to acquire a unique the disputed domain name, and not the Complainant.

The Respondent also claims that there is not a scintilla of evidence that the Respondent was actually aware of the Complainant or its trademarks, nor any evidence upon which to even infer awareness, as the Complainant provided very little evidence of any reputation outside of its own country of India, and failed to demonstrate that its trademark was famous internationally such that the Respondent could be presumed to have been aware of the Complainant.

The Respondent concludes that the Complainant brought the Complaint without a shred of evidence to support its serious allegations of bad faith registration and use. It also states that, although it can perhaps be forgiven as an overzealous protection of its trademark rights, what is not so easily forgiven is the apparent manufacture of evidence against the Respondent, when otherwise no evidence against the Respondent would have existed, as the Complainant appears to have actually entered its own self-serving search terms, i.e., “ceat tyre company” into the search bar on the Respondent’s website, thereby fabricating evidence of bad faith use against the Respondent. Therefore, the Respondent states that, under such circumstances, the Complainant should be found to have abused the Policy and have engaged in Reverse Domain Name Hijacking.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that it has trademark rights for CEAT and that the disputed domain name is identical to such trademark.

The Panel notes that the Complainant has provided evidence of ownership of national trademark registrations in various countries for CEAT in combination with other words and/or device elements.

As stated in Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

Although the Complainant’s trademarks and the disputed domain name are certainly not identical as claimed by the Complainant, the Panel finds that they are confusingly similar, as the dominant element of several registered trademarks owned by the Complainant is the denominative portion “ceat”, which is recognizable in the disputed domain name and differs from the latter for only one letter.

In light of the above, considering that the first element functions primarily as a standing requirement, the Panel finds that the condition under paragraph 4(a)(i) of the Policy has been met.

B. Rights or Legitimate Interests

In light of the Panel’s findings under the following section, it is not necessary to address this issue separately.

C. Registered and Used in Bad Faith

The Panel finds that, based on the evidence on record, the Complainant has failed to demonstrate that the Respondent was or could have been aware of the Complainant’s trademark and that, on balance of probabilities, it registered the disputed domain name with the Complainant’s trademark in mind.

Indeed, the Complainant has not submitted any document showing use of its trademark in the Respondent’s country and has provided very little evidence to demonstrate the asserted notoriety of its trademarks outside India at the time of the registration of this disputed domain name and thereafter.

Moreover, it appears from the records that also several third parties use the term “Ceat” to identify their business and the Complainant acquired the domain name <ceat.com> only in 2011, after a UDRP proceeding which was brought by the Complainant one year after the registration of the <ceat.com> domain name.

As to the Complainant’s assertion that the Respondent’s bad faith could be inferred from the links referenced to the Complainant and its products published on the website to which the disputed domain name resolved, as mentioned in the paragraphs above, the Respondent contested the screenshots submitted by the Complainant, stating that the Complainant fabricated evidence in its favor by searching for “ceat tyre company” in the search bar of its parking website. The Panel notes that the screenshots submitted by the Complainant confirm the Respondent’s allegation. On the other hand, the Respondent submitted screenshots archived by an independent third party (Domaintools.com) showing that its website displayed only links not related to the Complainant and its business. Based on such evidence, the Panel concurs with the Respondent that there is nothing in the Respondent’s use of the disputed domain name to show that the Complainant intended to target the Complainant and its trademarks.

In light of the circumstances of the case, the Panel also finds that the Respondent’s pointing of the disputed domain name to a parking page displaying generic sponsored links unrelated to the Complainant and offering the disputed domain name for sale does not amount to bad faith use.

Indeed, the Respondent’s documented registration of multiple domain names consisting of 5-letter invented words also supports the finding that the Respondent more likely than not registered and used the disputed domain name in good faith.

In view of the foregoing, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.

D. Reverse Domain Name Hijiacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).

The Panel notes that the Complaint is very weak and that the Complainant, being represented in this case, should have known that it could not demonstrate that the Respondent registered and used the disputed domain name in bad faith as required by paragraph 4(a)(iii) of the Policy. Whilst the Complainant’s failure to demonstrate one or more substantive requirements would lead only to a denial of the Complaint in other circumstances, the Panel in this case deems appropriate to issue a finding of Reverse Domain Name Hijacking since, as highlighted in Section 6.C above, the Complainant’s screenshots showing use the disputed domain name in connection with the Complainant’s trademark submitted as Annex 2 to the Complaint have been clearly fabricated in an attempt to create evidence of the Respondent’s bad faith.

Accordingly, the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Luca Barbero
Presiding Panelist

Vinod K. Agarwal
Panelist

Date: January 14, 2019

SEPARATE OPINION BY THE HONOURABLE NEIL ANTHONY BROWN QC ON THE ISSUES OF IDENTICAL OR CONFUSINGLY SIMILAR AND RIGHTS AND LEGITIMATE INTERESTS
IDENTICAL OR CONFUSINGLY SIMILAR

Panelist Brown finds that the disputed domain name is not identical or confusingly similar to the CEAT trademark. It must first be remembered that the Complainant’s sole submission was the patently wrong submission that the domain name was identical to the trademark, i.e., that “ceate” was identical to CEAT. It did not submit that the domain name was confusingly similar to the trademark, and presumably took the view that it was not. Even assuming that a panel should determine an issue that was not raised, a proper comparison between the domain name and the trademark shows that the former is not confusingly similar to the latter. First, the addition of the letter “e” to the trademark is significant and not peripheral, as it determines the way the word appears, the way the reader would parse it and how it would sound when pronounced in the English language, distinguishing it in each respect from the trademark. Prior UDRP decisions have noted that even the addition of a single letter can be very significant in this process. Secondly, it must be assumed that internet users are literate and would presumably know at the very least that when they see the word “ceate” they are not seeing the word CEAT. Even if they think a spelling mistake has been made it is hard to believe that they would then abandon all caution and conclude that the domain name <ceate.com> would lead them to a company they know is called Ceat. It is therefore improbable that anyone would be confused by the domain name.
RIGHTS AND LEGITIMATE INTERESTS

Panelist Brown is of the view that the parties have litigated this issue and are entitled to have it adjudicated. In his opinion the Respondent has shown that it has a right or legitimate interest in the disputed domain name. First, it is clear that the domain name is an unusual and probably a new word and it should be said clearly that the Respondent like anyone else has every right to construct or invent any such word, subject of course to the law. This is exactly what the Complainant did to create its own name, for it has merely taken the initials of Cavi Elettrici e Affini Torino (Electrical Cables and Allied Products Turin) to create the acronym CEAT. Secondly, the Respondent has a right and also a legitimate interest in registering and holding in reserve a domain name consisting of an invented word, which might be of value and interest to a new business entrant or a party looking for the word to use as a brand or as an acronym. Thirdly, the whole basis of the Complainant’s case was that the Respondent had designs on the Complainant and was misappropriating its good name, in other words that it was targeting the Complainant. If this allegation were correct, which it clearly is not, the Respondent has been remarkably half-hearted about it: it has not used the Complainant’s name at all and has never referred to its activities or products. The only aspersion cast on the Respondent comes from the fabricated evidence the Complainant tried to use to influence the Panel’s decision. This lack of targeting by the Respondent shows that it has both a right and legitimate interest in the domain name by creating it and holding it with the prospect of selling it in the future to a willing purchaser.

The Hon Neil Brown Q.C.
Panelist
Date: January 14, 2019


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