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Sihi.com : Valuable CVCV domain lost in UDRP, but not all panelists agreed

A registered trademark does not give automatic rights to a domain.

The SIHI trademark led to this domain’s loss.

The domain name Sihi.com was just lost in a UDRP at the National Arbitration Forum. The owners, Ashantiplc Limited, have listed the domain for sale at eNaming.

Sihi.com expired in late 2015, twenty years after it was registered in 1995, and was auctioned off at NameJet where it sold for $5,100 dollars.

A few months later, a company asserting they are the previous registrant who failed to renew it, filed a UDRP.

IP attorney, John Berryhill fought a gallant fight, stating the following on behalf of the Respondent:

  • SIHI trademark registration is not in the name of Complainant but a different company and complainant has not submitted evidence of ownership.
  • Complainant has not asserted common law rights in the mark or any other evidence of reputation.
  • Respondent has rights and legitimate interests in the Disputed Domain Name.  4- Respondent obtained the domain in a competitive public auction of abandoned names.
  • Acronym and short generic domain names have significant utility and value for Respondent as a domain name reseller.
  • Respondent did not register or use the Disputed Domain Name in bad faith.
  • Complainant has not fulfilled its burden in demonstrating Respondent’s registration was motivated by the inherent value of the SIHI mark.
  • Complainant offered to purchase the Disputed Domain Name from Respondent for $10,000 prior to the initiation of this Proceeding.
  • “sihi” is a generic term which means “sweet” in the Kannada language. The Latinized script rendition of the Kannada word is “sihi”.

The Complainant, Flowserve Corporation, responded thus:

  • “sihi” is neither a generic term with a commonly understood meaning nor a descriptive one.
  • Respondent’s potential uses of the “sihi” name are nothing more than after the fact justifications for its conduct.
  • Flowserver Corporation acquired SIHI Group B.V. in January 2015 and the acquisition included SIHI trademarks.
  • SIHI has been a world-class manufacturer of pumps for nearly 100 years.
  • The SIHI Group registered the Disputed Domain Name in 1995 and maintained that registration until recently.
  • During the acquisition of the SIHI Group and its transition the Disputed Domain Name renewal inadvertently lapsed.
  • Respondent acquired the Disputed Domain Name within hours of the expiration.
  • When “sihi” is searched on Google’s search engine, the entire first page (and most of the subsequent pages) refers to Complainant’s products.
  • Respondent should have been aware of Complainant’s rights in the SIHI trademark when it registered <sihi.com>.

According to the UDRP documents, the Respondent countered to the $10,000 dollar offer made by the Complainant, with an asking price of $100,000 dollars.

The three member panel seems to indicate that this asking price far exceeded the Respondent’s “out of pocket” costs. They also sided with the Complainant’s claims of having established commercial use of the SIHI mark since 1920.

In a split decision, two panelists, Hector Ariel Manoff (Chairman) and Scott R. Austin ordered the domain Sihi.com to be transferred to the Complainant.

One panelist, Professor David E. Sorkin, delivered a dissenting finding:

“I respectfully dissent. While the Disputed Domain Name is identical to a mark in which Complainant appears to have rights, Complainant did not present any evidence of its trademark rights prior to its Additional Submission, and for the reasons set forth below I do not think that the Additional Submission ought to have been considered by the Panel. In addition, I do not think that Complainant has met its burden of proving that the Disputed Domain Name was registered and is being used in bad faith.”

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

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