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Shaktiman.com #UDRP : The Complainant was found guilty of #RDNH

The Complainant that filed a UDRP against the domain Shaktiman.com claimed to have used the SHAKTIMAN mark since 1961.

Both parties are in India. The Respondent argues that although the Complainant has claimed to be doing business as SHAKTIMAN since 1961, copies of its device trademark registrations reveal the date of filing is February 3, 2012 and the claimed date of first use is June 30, 1999. The Respondent alleges that the Complainant has made false claims regarding the use of its mark since 1961 and 1999, as the Complainant was incorporated only on July 26, 2000.

The sole panelist at the WIPO noted the domain’s age and the factual errors in the Complainant’s submission, siding with the Respondent:

The disputed domain name was registered about 21 years ago and the Complainant has not explained the substantial delay in filing the Complaint. Delay in filing a UDRP complaint need not be fatal to the complaint, particularly in cases where the mark is distinctive. However unexplained delay such as in the present case, coupled with other factors such as unfounded allegations made by the Complainant, the lack of evidence of use of the mark prior to registration of the disputed domain name, and the Complainant’s failure to establish that its mark was known before registration of the disputed domain name, are factors when considered collectively, does not help the Complainant’s case.

Granting the Respondent’s request for a finding of Reverse Domain Name Hijacking was the final strike in this case.

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tirth Agro Technology Private Limited v. Anuj Bhargava, Anroh Global Services Pvt. Ltd.
Case No. D2021-0360

1. The Parties

The Complainant is Tirth Agro Technology Private Limited, India, represented by Law office of H K Acharya & Company, India.

The Respondent is Anuj Bhargava, Anroh Global Services Pvt. Ltd., India.

2. The Domain Name and Registrar

The disputed domain name <shaktiman.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2021, 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 for the disputed domain name.

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 February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. The Response was filed with the Center on March 1, 2021.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on March 10, 2021. The Panel finds that it was properly constituted. 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’s business appears to be related to agricultural machines. The Complainant owns the SHAKTIMAN trademark and has trademark registrations for the figurative device mark containing the word SHAKTIMAN. Some of the Complainant’s Indian trademark registrations registered on February 3, 2012 are:

Trademark SHAKTIMAN (device) registration number 2277164 under class 17, use from June 30 1999;

Trademark SHAKTIMAN (device) registration number 2277165 under class 18, use from June 30 1999;

Trademark SHAKTIMAN (device) registration number 2277166 under class 19, use from June 30 1999;

Trademark SHAKTIMAN (device) registration number 2277167 under class 20, use from June 30 1999;

Trademark SHAKTIMAN (device) registration number 2277169 under class 22, use from June 30 1999;

Trademark SHAKTIMAN (device) registration number 2277173 under class 26, use June 30 1999.

The Complainant has foreign trademark registrations for the SHAKTIMAN (device) mark, these include: United States Patent and Trademark Office registration number 4,720,532, registered on April 14, 2015, date of first use December 5, 2012. Israeli trademark registration number 246687 for SHAKTIMAN (device) registered on March 5, 2014. European Union Trade Mark registration number 010987394, registered on November 16, 2012 for SHAKTIMAN (device) mark.

The disputed domain name was registered on January 13, 2000. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have used the SHAKTIMAN mark since 1961, and the figurative/device mark since 1999. The Complainant states that it has extensively promoted its products under the mark, exported to major countries of the world, and the mark has acquired trans-border reputation, goodwill and fame.

The Complainant states that the disputed domain name is identical or confusingly similar to the SHAKTIMAN mark, that the Respondent does not have rights or legitimate interest in the disputed domain name and the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent requests the denial of the Complaint alleging that it is the original, prior adopter and owner of the disputed domain name. The Respondent states that the disputed domain name has been registered for Ruchi Infotech Limited, an entity engaged in software development services who currently uses the website linked to the disputed domain name. The Respondent contends that the disputed domain name was registered on January 13, 2000, which is prior to the registration of the Complainant’s domain name <shaktimanagro.com>, which was registered on July 18, 2005.

The Respondent argues that although the Complainant has claimed to be doing business as SHAKTIMAN since 1961, copies of its device trademark registrations reveal the date of filing is February 3, 2012 and the claimed date of first use is June 30, 1999. The Respondent alleges that the Complainant has made false claims regarding the use of its mark since 1961 and 1999, as the Complainant was incorporated only on July 26, 2000. In support of its contention, the Respondent has filed a copy of the master data pertaining to the Complainant company, from the Registrar of Companies, India.

The Respondent argues that the Complainant is a subsequent adopter but is trying to seize the disputed domain name from the rightful owner. The Respondent states that the Complainant’s main business is agricultural implements, therefore allegations of confusing or misleading consumers is unfounded as the parties are not competitors. The disputed domain name was not registered to disrupt the Complainant’s business asserts the Respondent, and requests for a finding of Reverse Domain Name Hijacking (“RDNH”), as bad faith has not been established in this case.

6. Discussion and Findings

Under paragraph 4 (a) of the Policy, the Complainant has to establish three elements to obtain the remedy of transfer of the disputed domain name, these are:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has provided evidence of its registered trademarks, based on which the Panel finds the Complainant has established its rights in the trademark. Under the first element of the Policy, no specific reference is made to the date on which the owner acquired the trademark rights. See section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The date on which the owner acquired rights in the trademark, however does influence the assessment of bad faith, and on the outcome of the case.

The first element has been met by the Complainant, as the disputed domain name is found to be identical to a mark in which it has rights.

B. Rights or Legitimate Interests

The Panel need not make a finding under the second element of the Policy in view of the findings made under the third element, regarding lack of bad faith on the part of the Respondent.

C. Registered and Used in Bad Faith

The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent. It is an accepted proposition that if a complainant claims that the disputed domain name has been registered in bad faith by a respondent, then it is necessary for the complainant to show that the respondent ought to have been aware of the complainant’s mark. See for instance, GMbH V. Telepathy, Inc, WIPO Case No. D2007-0261. The evidence submitted by the Complainant in these proceedings does not establish that its mark was widely known at the time the disputed domain name was registered, and reasons for this finding is discussed in the following paragraphs.

The Complainant has filed voluminous documents of the use of its trademark, however the documents submitted by the Complainant as evidence of use of its trademark, are after the date of registration of the disputed domain name. This does not help the Complainant’s case, as the issue in this dispute is not regarding the Complainant establishing trademark rights after the date the disputed domain name was registered, but before it was registered. The glaring gap in the evidence filed by the Complainant, is the lack of documents showing use of the mark prior to the year 2000. The Complainant has filed as evidence Annexure C part 1 and part 2, which are selected sales bills showing use of its mark. The earliest document of use in Annexure C part 1 is in the year 2001. Annexure C part 2 shows the earliest document of use is in the year 2013. The documents of use filed by the Complainant at least, therefore do not establish that the Complainant had used the mark prior to the registration of the disputed domain name.

The Complainant has filed copies of its registered trademark certificates as Annexure B part 1 and part 2 to the Complaint. The copies of the registered trademark certificates show that the Complainant had filed the applications only after the date of registration of the disputed domain name, except for one document that apparently does not pertain to the Complainant. The said document filed by the Complainant, is a renewal application for the trademark number 209541 B, dated January 18, 1999 pertaining to a figurative / device mark with the word SHAKTIMAN, which is filed under class 7, and the proprietor’s name is “Sunlight Foundry”.

The renewal application shows the mark has been renewed till June 19, 1997, but the trademark owner’s name is “Sunlight Foundry”, which is not the Complainant’s name. The Panel independently verified the registration details for the said mark on the Indian Trademark Office website, the date of the trademark application is given as June 19, 1962, and the proprietor’s name for the trademark is displayed as “Sunlight Foundry or Des Raj, trading as Sunlight Foundry, Partnership Firm details Kasturi Lal, G.T. Road Batala (Punjab)”. The Complainant has not submitted any material to show that “Sunlight Foundry”, is connected with the Complainant. In the absence of any evidence showing a connection between “Sunlight Foundry” and the Complainant, the Panel is not inclined to speculate whether the owner of the trademark application 209541 B, is connected to the Complainant.

Furthermore, as highlighted by the Respondent, there is the unexplained contradiction between the alleged date of first use of the trademark, shown as June 30, 1999 in the Complainant’s trademark applications, and the date of incorporation of the Complainant which is on July 26, 2000. Here again, no explanation or clarification has been provided by the Complainant regarding the date of use of the mark being about a year before the Complainant was incorporated. In the absence of any explanation with supporting documents, it is logical to conclude that the Complainant’s mark may not have existed before the Complainant came into existence. Taking into account all the evidence submitted by both the parties, the material on record does not support a finding that the Respondent ought to have known of the Complainant’s mark when the disputed domain name was registered. Under these circumstances, it reasonable to infer that it is unlikely the Respondent registered the disputed domain name because of the existence of the Complainant’s trademark.

The term “Shaktiman” is a generic word in the Hindi language which means “strength” or “might”. There is considerable third-party use of “Shaktiman” as a trademark or service-mark in connection with many different products and services. “Shaktiman” is also the title of a popular Hindi television show featuring a superhero protagonist under the name of “Shaktiman”. When the mark in question is a dictionary word that is used by numerous parties as a trademark, it is necessary for the complainant to establish whether by direct evidence or facts allowing an inference to be drawn, that the respondent would have somehow had the complainant in mind when registering the disputed domain name. However, as discussed, the evidence submitted by the Complainant does not establish that its mark had been extensively used and promoted prior to the registration of the disputed domain name or that it was targeted by the registrant of the disputed domain name in any manner.

The disputed domain name was registered about 21 years ago and the Complainant has not explained the substantial delay in filing the Complaint. Delay in filing a UDRP complaint need not be fatal to the complaint, particularly in cases where the mark is distinctive. However unexplained delay such as in the present case, coupled with other factors such as unfounded allegations made by the Complainant, the lack of evidence of use of the mark prior to registration of the disputed domain name, and the Complainant’s failure to establish that its mark was known before registration of the disputed domain name, are factors when considered collectively, does not help the Complainant’s case.

The Panel does not find from all the circumstances discussed, that the disputed domain name was registered to exploit the Complainant’s mark. It appears to be a case where the Respondent has registered a domain name in the early phase of the Internet and the trademark owner, has filed the Complaint many years after the domain name registration. In previous such cases, UDRP panels have typically denied the complaints. See for example, UTV Limited v. United Europe Consulting, Kwang Pyo Kim, WIPO Case No. D2011-2293, and News Group Newspapers Limited v. Privacydot link Customer 2383026/ Blue Nova Inc., WIPO Case No. D2019-0084 (“The Sun case”), where the respondent had registered the generic domain name <thesun.com> in the early phase of the Internet, and the trademark owner has filed the complaint many years after the domain name registration. The panel found that the complainant did not have a strong case against the respondent as there was no evidence that the respondent had registered the domain name with the intent to sell it to the complainant, or to disrupt its business or to confuse customers seeking to access the complainant’s website.

In the present case, the Complainant who has asserted the registration of the disputed domain name was in bad faith ought to have establish that its trademark was targeted and that it had acquired distinctiveness and was widely known to be associated with its business at the time of registration of the disputed domain name. However, the evidence indicates that the Complainant’s mark may not have exist when the Respondent registered the disputed domain name. The reasons are: first, the documents filed by the Complainant shows the earliest use of the mark by the Complainant is from 2001. Second, the (potentially explainable) discrepancy between the indicated date of first use of the mark and formation/incorporation of the Complainant, as the Complainant’s date of incorporated is in July 2000, but the trademark registration records show the date of first use of the Complainant’s mark is June 30, 1999. (iii) The trademark renewal document filed by the Complainant for a trademark dated 1962, is not in the Complainant’s name. It is the consensus view among UDRP panels, that when a domain name has been registered before the trademark of the complainant, the registration of the domain name is not in bad faith, because the registrant of the domain name could not have contemplated the complainant’s trademark non-existent right. See section 3.1 of the WIPO Overview 3.0.

In addition, apart from the lack of evidence to show that the Complainant had used its trademark prior to the registration of the disputed domain name, there is absence of evidence to show that the Respondent has specifically targeted the Complainant’s mark or was trying to intentionally take advantage of the Complainant’s rights or mislead Internet users. The Panel is therefore inclined to accept the Respondent’s argument that the disputed domain name has not targeted the trademark of the Complainant and was not registered in bad faith. Although the disputed domain name does not resolve to an active page, given the circumstances discussed here, it does not deter the Panel from making a finding that the Complainant has not fulfilled the third element.

In the light of all that has been discussed, it is accordingly found that the Complainant has failed to establish that the Respondent has registered or used the disputed domain name in bad faith.
Reverse Domain Name Hijacking

RDNH implies using the Policy in bad faith in an attempt to deprive a valid registered domain name holder of a domain name and that the complaint was brought in bad faith which constitutes an abuse of the Policy under paragraph 15 (e) of the Rules. RDNH requires that a complainant or its counsel ought to have known that the respondent had registered and used the domain name in good faith, and yet filed the complaint.

Taking into account the entire set of facts in this case, the Complainant or its counsel ought to have known of the lack of relevant evidence, which would prove to be a hurdle to establish that the Respondent had registered the disputed domain name to target its mark. Under these circumstances, the Panel is inclined to believe that the present case is one where the Respondent has registered the disputed domain name in the early phase of the Internet and the trademark owner has filed a UDRP complaint many years after the domain name registration, such as in The Sun or UTV cases, supra. Given the circumstances discussed, it would be fair to state that this Complaint would have failed even in the absence of a response.

The Complainant is represented by its counsel, who ought to have known that the Complaint is a baseless claim due to the lack of relevant evidence to show bad faith registration on the part of the Respondent. To file such a complaint with constitutes misuse of the Policy.

The object of the Policy is to provide a remedy for cases where a domain name is registered to target a trademark, but not to enable a mark owner to attempt to use the mechanism offered under the Policy to deprive a registrant of a valid registration of a domain name. Such an attempt by a complainant has been found to be abuse of the Policy in previous cases justifying a finding of RDNH. See for instance Crypto World Journal Inc. v. Xiamen Privacy Protection Services Co., Ltd. /Lin Xiao Feng, WIPO Case No. D2018-1207.

In view of all the circumstances discussed, the Panel makes a finding of RDNH against the Complainant.

7. Decision

For the foregoing reasons, the Complaint is denied.

Harini Narayanswamy
Sole Panelist
Date: March 24, 2021


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