An Indian company by the name Jindal Stainless Limited attempted to get the domain inless.com via the UDRP process.
Registered in 2006 and listed for sale for $9,999 dollars, inless.com appears to be a substring of the company’s brand.
The Complainant alleged that wildcarding the domain such as “jindalsta.inless.com” equals to typo-squatting.
This is some ridiculous claim, however, and the WIPO panel ruled in favor of the Respondent, denying the domain’s transfer.
“In short, there is no evidence that the Respondent registered the disputed domain name because of the Complainant, to sell to the Complainant, or to use to divert Internet traffic of users seeking out the Complainant.”
Oddly, the Respondent’s request for a finding of Reverse Domain Name Hijacking was denied.
The domain transfer was denied.
ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Jindal Stainless Limited and Jindal Stainless (Hisar) Limited v. Domain Admin Case No. D2022-4443
The Parties
The Complainant is Jindal Stainless Limited and Jindal Stainless (Hisar) Limited, India, represented by Sarad Kumar Sunny, India.
The Respondent is Domain Admin, United States of America (“United States”), represented by Law Offices of Grant G. Carpenter, United States.
The Domain Name and Registrar
The disputed domain name inless.com is registered with Network Solutions, LLC (the “Registrar”).
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2022. On November 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2022, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Perfect Privacy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 30, 2022.
The Center verified that the Complaint, together with the amended 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 December 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2022. The Response was filed with the Center on December 16, 2022.
The Center appointed John Swinson as the sole panelist in this matter on January 11, 2023. 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.
Factual Background
The Complainants are both companies incorporated and having offices in India. The First Complainant was founded in 1980 and is a very large stainless-steel manufacturer. The First Complainant has a website located at jindalstainless.com and has owned this domain name since 1999. The Second Complainant was founded in 2013 and is one of the world’s largest producers of “slabs & blooms, hot rolled coils, strips, plates, coin blanks, precision strips and cold rolled coils”. The Second Complainant owns approximately 32% of the shares in the First Complainant, and both Complainants are part of the O.P. Jindal Group.
The Second Complainant owns the common law trademark JINDAL STAINLESS and licenses this trademark to the First Complainant. It is asserted that the Complainants and their predecessors have used the JINDAL STAINLESS trademark since 1970.
The Second Complainant owns trademark registrations for a device or logo for JSL in large font, a rainbow image, and JINDAL STAINLESS in smaller font under the JSL and rainbow image. See, for example, Indian Trademark Registration No. 3161577, filed on January 18, 2016 and registered on January 4, 2017.
According to the Registrar’s records, the Respondent is “Domain Admin” from Las Vegas, Nevada, United States. The Response provides little information about the Respondent.
The disputed domain name was registered on October 5, 2006.
At the present time, the website to which the disputed domain name resolves is a website titled PerfectDomain that lists the disputed domain name for sale for USD 9,999.
According to a prior decision, the Respondent owned (at the date of that decision) over 1,500 domain name registrations. See Institut de Radioprotection et de Sûreté Nucléaire v. Domain Admin, FindYourDomain, WIPO Case No. D2021-4361.
Parties’ Contentions
Complainant
In summary, the Complainants makes the following submissions:
The Second Complainant’s famous trademark JINDAL STAINLESS deserves to be protected from any third party’s (including that of the Respondent) act of cyber piracy, cybersquatting or typo-squatting.
When one types the domain name “jindalsta.inless.com” in the browser’s address bar, the page redirects the visitors to the disputed domain name inless.com.
“jindalsta.inless.com” is a common typographical error of the Complainants’ registered and genuine domain name jindalstainless.com as well as Complainants’ registered trademarks. “jindalsta.inless.com” is merely a misspelling of the Complainants’ registered trademark JINDAL STAINLESS.
The Respondent’s act is calculated to trade on the Complainants’ name by exploiting likely mistakes by unsuspecting users when entering the URL address, hence citing a clear example of typo-squatting.
Since the Respondent’s act is calculated to trade on the Complainants’ name by exploiting likely mistakes by unsuspecting users when entering the URL address and misuse the Complainants’ famous trademark JINDAL STAINLESS, the Respondent can have no right or legitimate interest in the disputed domain name. Further, the sole purpose of registering the disputed domain name is to misappropriate the reputation associated with Complainants’ famous trademark JINDAL STAINLESS to cash in on the goodwill attached thereto. In the present case, the Respondent has attempted to sell the disputed domain name for profit.
The Respondent’s act is not bona fide since the Respondent is trading on the fame and recognition of the Complainants’ trademark JINDAL STAINLESS to cause user confusion.
The Respondent’s intent is to trick users into visiting the disputed domain name.
The Respondent is aware of the commercial value and significance of the Complainants’ domain name
jindalstainless.com and that is why the Respondent has grabbed the disputed domain name. This is nothing but an act of opportunistic bad faith registration on the part of the Respondent. The Respondent is seeking illegal commercial gratification.
Respondent
In summary, the Respondent makes the following submissions:
The Respondent used a wildcard DNS record in respect of the disputed domain name.1
The Respondent implemented the wildcard DNS record with no knowledge of the Complainant or its trademark and continued to have no knowledge of the Complainant or its trademark until it received the Complaint.
The disputed domain name only matches the final six characters of the Complainant’s JINDAL STAINLESS trademark, which consists of a total of sixteen characters. Further, the “dominant” feature of the Complainant’s JINDAL STAINLESS trademark is “jindal” and not “stainless.” The disputed domain name only incorporates a portion of the non-dominant and generic word “stainless.” Accordingly, the Complainant fails the typical “side-by-side” comparison test.
The disputed domain name is a short and memorable domain name with a wide variety of commercial uses. Accordingly, it is the exact type of domain name that a panel should find supports a bona fide use of holding for resale.
Given that the disputed domain name consists only of six characters out of sixteen characters of the Complainant’s trademark and that the relevant portion of the Complainant’s trademark is the generic word “stainless” – even very thorough due diligence analysis would not have made the Respondent aware of the Complainant or its trademarks. For example, neither a Google search nor a search of the WIPO Brand Database for “inless” return any records for the Complainant or its products or services.
The Complainant cites various UDRP cases where the domain name in question was a minor spelling variation of the complainant’s mark or domain name. However, these cases are very clearly extremely different than the case at hand. “Inless” is not a minor spelling variation of “Jindal Stainless.”
The Respondent requests a finding of Reverse Domain Name Hijacking.
1 A wildcard DNS record is a record in a DNS zone that will match (and resolve) requests for any potential variation of non-existent domain names (e.g., at the third level). A wildcard DNS record is specified by using “*” as the leftmost label of a domain name, for example, *.example.com.
Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Procedural Issues – Two Complainants
The Complainant is filed by two Complainants.
Previous panels have permitted a single complaint where the complainants have a “common grievance” against the respondent, as long as it is equitable and procedurally efficient to do so (Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh, WIPO Case No. D2000-0891; NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128; and Bennett, Coleman and Company Limited, Worldwide Media Private Limited v. Mr. Hubert Louis, WIPO Case No. D2019-0221).
The Panel finds that it is procedurally efficient to permit a single Complaint in this case as the Complainants are related entities. Both use the relevant trademark. As such, the Complainants share a common grievance against the Respondent.
The Respondent did not raise any objection to both Complainants being named in the Complaint.
In this decision, the Panel will refer to both the First Complainant and the Second Complainant as “the Complainant” unless explicitly stated otherwise.
Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns trademark registrations for a trademark in logo format that has the letters and words JSL, JINDAL STAINLESS, and a rainbow image. The Complainant also claims common law rights in the unregistered trademark JINDAL STAINLESS. The Respondent appears to accept that the relevant trademark for consideration by the Panel is JINDAL STAINLESS.
For the purposes of analysis under the first element of the Policy, the Panel will compare the disputed domain name (inless.com) with the operative portion of the Complainant’s (registered and claimed common law) trademark, namely JINDAL STAINLESS.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, disregarding the “.com” part of the domain name.
The disputed domain name does not include the Complainant’s JINDAL STAINLESS trademark. The term JINDAL STAINLESS is not recognisable in the disputed domain name. The dominant feature of the Complainant’s trademark is JINDAL. This word does not appear in the disputed domain name.
The commonality between the disputed domain name and the Complainant’s trademark are the letters “inless”, which are the last six letters of the word “stainless”. The Complainant has no trademark rights in the letters “inless” nor “stainless”. On a side-by-side comparison of the disputed domain name and JINDAL STAINLESS, the Panel concludes that the former is not confusingly similar to the latter. Compare The International Olympic Committee (IOC) v. Domain Administrator, See PrivacyGuardian.org / Kilibuy Jin Xin, WIPO Case No. DCC2021-0010; Hertz System, Inc. v. Kwan-ming Lee, WIPO Case No. D2009-1165; and Travel Designer India Private Limited v. Michael King, WIPO Case No. D2021-3862.
The Complainant also submits that the Panel should compare the broader domain name
jindalsta.inless.com including the jindalsta third-level subdomain with the Complainant’s trademark. According to the Respondent, the disputed domain name is setup with wildcard DNS records that allow
jindalsta.inless.com to resolve despite the subdomain jindalsta.inless.com not being actually registered as such. The Panel notes that in some limited circumstances, as part of a holistic review of the facts, it may be appropriate to “span the dot” and consider the generic Top-Level Domain (see, e.g., Mr Green Ltd. v.
Alfred Zeiselberger, Mediapool Communications Limited, WIPO Case No. D2017-1944; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269) or in rare circumstance consider the subdomain (see, e.g., MGLM Holdings B.V. v. Yungu Jo, DOMAIN-FOR-SALE—, WIPO Case No.
D2021-3826). Even viewing the “spanning the dot” concept in a light most favourable to the Complainant (i.e., accepting that the span may look to a third-level domain as opposed to only the Top-Level Domain), the Panel cannot accept in this case that the disputed domain name is confusingly similar to the cited mark (there being no other indicia suggesting the Respondent’s intention to target the Complainant).
The Panel also notes that a finding of confusing similarity where the analysis hinged in part on a third-level subdomain would need to be treated with caution especially insofar as the transfer of a second-level domain name away from a registrant could impact third parties using other subdomains under a given second-level domain name.
In either event, in the circumstances of this case, in light of the Panel’s finding in the third element, it is unnecessary to come to a determination under the first element.
Rights or Legitimate Interests
In view of the finding below, the Panel does not need to make a decision under the second element of the Policy.
Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. These are conjunctive requirements; both must be satisfied for a successful complaint.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by the complainant.
The Respondent denies knowledge of the Complainant at the time of registration of the disputed domain name. There is no evidence that the Respondent used the disputed name to take advantage of the Complainant or the Complainant’s trademark.
The Complainant argues “it is very likely that many internet users seeking to locate official website of the Complainants i.e. ‘jindalstainless.com’ will certainly misspell or will make a typographical error while typing into their internet browsers and will mistakenly arrive at disputed domain name.” While the Panel recognizes that the Respondent’s wildcarding practice may cause domain names corresponding to third-party trademarks to resolve to the disputed domain name, it does not appear likely to the Panel that Internet users will accidently include a “.” in the exact location necessary to cause resolution to jindalsta.inless.com.
In short, there is no evidence that the Respondent registered the disputed domain name because of the Complainant, to sell to the Complainant, or to use to divert Internet traffic of users seeking out the Complainant.
While the Panel has some misgivings about the Respondent’s practice that may draw traffic meant for third parties, it is not clear in the case circumstances that the Complainant has been targeted.
The Complainant fails to meet the third element of the Policy.
Reverse Domain Name Hijacking (RDNH)
The Respondent has sought a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides, in part:
“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.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The fact that a complaint has failed is not in itself sufficient to warrant a finding of reverse domain name hijacking.
In the present case, the Complainant raised novel arguments. The factual situation was not straightforward, and it is likely that the Complainant did not know that the Respondent used a wildcard DNS record. As a result of this likely misunderstanding of the factual situation, the Complainant overstated its case in some respects. (The Respondent also acknowledges that the Complainant may have been “unaware of wildcard domains and how they function”). It would have been helpful if the Parties communicated prior to filing the Complaint because this may have cleared up this misunderstanding, but it is understandable that the Complainant did not do so here because the Respondent used a privacy service (and potentially did not include its correct legal name in the Registrar’s records).
The Panel declines to make a RDNH finding in this case.
Decision
For the foregoing reasons, the Complaint is denied.
/John Swinson/ John Swinson Sole Panelist
Date: January 25, 2023
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