A Domain Name Dispute (UDRP) was recently brought by Oravel Stays Private Limited (famously known as OYO Rooms) before WIPO against an Individual Mr Vijay Kumar Kannan based at bangalore, India over domain name OYOLife.com.
Oravel Stays Private Limited alias OYO Rooms came is a company registered in India that provides hotel services and have tie ups with budget hotels all across India under the brand name OYO Rooms. It had launched “OYO Living” in October 2018 for renting of apartments, while renamed its business to “OYO Life” in February 2019, that is, two months after the registration of domain name <OYOLIFE.com>.
Mr Kannan, being healthcare entrepreneur registered the DomainName <OYOLIFE.com> on 27th November 2018 in good faith, after fully understanding the generic nature of the term ‘OYO’ (means Application in Japanese) and combining with another generic term ‘LIFE’. That is, Mr Kannan had conceived and registered domain on 27 November 2018, more than two months before OYO Rooms adopted the name as OYOLife and later registered OYOLife.in on 30 January 2019. It is pertinent to note, that there are over 1,500 domains registered in .COM domain extension itself which start with the word “OYO” and the same is quite logical, as three letter words have infinite interpretations and different meanings for such short acronyms. In Banca Monte dei v. Charles Kirkpatrick [WIPO Case No. D2008-0260], the panel highlighted the significance of short-letter expressions that have meanings other than those claimed by Complainant.
The following further proves that OYO otherwise has been in wide use by numerous third parties even in India, therefore Mr Kannan being prior user of OYOLIFE, had complete rights to continue using the same.
Here-in-after, OYO Rooms has been referred as Complainant and Mr Kannan as the Respondent.
Background of the Parties:
Under the UDRP Proceedings, Complainant Contended that it is a company registered in India that provides hotel services under the trademark OYO. The name OYO was coined and adopted in March 2012 and thereafter, several variants thereof such as OYO Life, OYO Rooms, OYO Homes, OYO Townhouse, etc. were independently coined, honestly conceived and used by the Complainant.
The Domain Registrant and the Respondent in the UDRP matter of OYOLife.com is a healthcare entrepreneur. Respondent is Software Engineer, graduated in 2002 from Madras University and has been mainly catering to Health Industry since 2005. He started working with AsconHealth Inc as offshore lead in September 2005. Later he also founded SmartRX, worked with MedCall Health Solutions Pvt Ltd and currently, he’s Vice President with PeerHealth. His assertions were supported by proper evidence, an Affidavit a link to his LinkedIn profile.
Under a UDRP / INDRP proceedings, all of the following grounds are required to be successfully proved by the Complainant in order to succeed:
- The domain name is identical and/or similar to the Trademark.
- The Respondent lacks legitimate rights and Interests.
- Domain has been registered in Bad Faith.
- Domain is being used in Bad Faith.
Similarity with the Trademark:
The Complainant had various device mark Registration for OYO either alone or in combination with other keywords under classes 35, 39, 42 and 43. And ‘OYO’ as a wordmark only under Class 39. While in April or May 2019 onwards only, it applied for Trademarks over ‘OYO Life’.
That is, it had trademark rights over the mark OYO, therefore the first condition is satisfied and there was not a dispute as it not necessarily have Trademark.rights over OYO Life.
Complainant alleged that the Respondent merely parked the domain and has not hosted any content on the website. There is no demonstrable preparation to use or actually use the domain name in connection with any bona fide offering of goods or services. Given that the trademark “OYO” of the Complainant, apart from being a house mark, is not a dictionary word and can be categorized as an invented mark and there is no reason to believe that the Respondent is commonly known by the domain name.
Respondent Contentions (represented CyLaw Solutions):
Complainant has no monopoly over this common term whatsoever. The term “OYO” was not invented/coined by complainant and does not exclusively belong to complainant. Complainant refers itself as OYO with tagline ‘On Your Own’, the said tagline is derived from Internet Slang, where OYO stands for ‘On Your Own’. Otherwise in India, Spykar Lifestyles India Pvt Ltd was the first organization to adopt the OYO as a brand and apply for the Trademark vide Trademark application no 1600103 dated 11 September 2007 for the same exact word OYO – On Your Own and also they owned another registered company by the name of OYO Lifestyle Pvt Ltd.
Respondent further provided details with proper Annexures of over 50 Trademarks applied/registered in India as OYO either alone or in combination with other keywords by third parties and stated that there could be hundreds of other businesses, who may never had applied for Trademarks. And moreover Respondent also stated that numerous businesses in India itself use the brandable term OYO as part of their name as provided above. In Canned Foods Inc v. Ult. Search Inc. NAF # FA96320 (2001) it was held “a Trademark that equally describes businesses conducted by many other people is not protectable term”.
Moreover, importantly the following Trademarks were registered in India after the Complainant had already started using term OYO in it’s business and also applied for Trademarks since 2014. The third parties that applied for registration of following similar/exact term OYO in different classes and these Trademarks are successfully registered in India as on date:
- “OYO” vide application number 3143770, under class 27 dated 31 December 2015.
- “OYO” vide application number 3190362, under class 37 dated 20 Feb 2016.
- “OYOfurniture.com” vide application number 3201230, under class 20 dated 1 March 2016.
- “OYO” vide application number 3344133, under class 32 dated 24 August 2016.
- “OYObaby” vide application number 3413915 and 3413917, under class 25 & 5 dated 21 November 2016 respectively.
- “OYO” vide application number 3551775, under class 2 dated 18 May 2017.
- “OYO” vide application number 3728507, under class 12 dated 16 January 2018.
Further ‘OYO’ has mainly originated in different languages, the geographical places around the world and used as brandable name by Individuals/Businesses and it means the following:
- OYO – geographical place, City as well as State in the country of Nigeria.
- OYO Empire – established in Nigeria in the Twelfth Century.
- OYO – town in the Republic of Congo.
- OYO River in Indonesia.
- OYO – music Album by American Singer Angelique Kidjo.
- Internet Slang, OYO means On Your Own.
- A generic meaning in different languages, mainly Japan.
Term OYO in japanese means “APPLICATION”, which is written as 応用 (Ōyō). Disputed Domain is a combination of two generic words “OYO” and “LIFE” in Japanese and English respectively, which has been coined by the Respondent, more than two months before even the Complainant conceptualized the said combination as provided herein below. More importantly, the term ‘Application’ (Japanese meaning for OYO) is what is more relevant to the Respondent, being a Software Engineer and generic term ”Application of Life” is widely used and google alone has 12,40,00,000 results for the same, mostly related to Software and Healthcare field.
Though the first choice of the Domain Name for the Respondent was “ApplicationLife.com”, but the same was already registered since 2016 with Japanese Domain Registrar/Nameservers, therefore the Respondent had to settle for disputed domain <OYOLIFE.com>, after he searched for some brandable alternative word for Application in different languages. The Respondent already owned few other domains with suffix LIFE (as declared above) and the disputed domain mixed well in his Domain Portfolio and quite suited his future plans for HealthCare project.
The above proves that OYO is a weak mark, as numerous businesses already use similar name under different classes. In Fresenius Kabi S.A. v. Domain Manager [WIPO # D2018-0491; <nutrihome.com>] it was held that:
… while the disputed domain is effectively the same as some of the Complainant’s trademarks, the Panel is not of the view that the names “nutri-home” or “nutrihome” can be regarded as associated exclusively with the Complainant in the minds of consumers. As is clear from the numerous examples provided by the Respondent of the use of these or similar names as business names, trademarks and domain names by parties other than the Complainant. The Respondent is in the business of inter alia trading in domains and claims to have registered the disputed domain, combining the commonplace prefix “nutri-” with the dictionary word “home”, as being of potential interest to customers wishing to offer nutrition-related services online. It provides evidence of other “nutri-” related domains that it registered in the same year as the disputed domain or in the preceding two years… the Panel found the Respondent’s explanation for its choice of the disputed domain to be credible, and concludes therefore that Respondent has rights or legitimate interests in respect of the disputed domain.
In many precedents, it has been held that as long as the domain has been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is permitted business model, under the Policy. [Gen. Mach. Prods. Co. v. Prime Domains, FA 92531 (2000)]. Further, it has been long-held that where domain is descriptive, the first person to register it in good faith is entitled to the domain, and that this is considered a “legitimate interest”; See for example; Target Brands v. Eastwind Group and see; Zero Int’l Holding v.Beyonet Servs., WIPO D2000-0161 (“Common words and descriptive terms are legitimately subject to registration as Domain Name on ‘first-come, first-served’ basis”).
Moreover, Respondent had parked the domain with Broking Company Media Options, while he may plan onto the next venture as to Healthcare, rather than keeping the Domain Name totally unused or parking with any links that may have risked domain in UDRP proceedings. In Aurelon B.V. v. Abdul Basit Makrani, [WIPO # D2017-1679; <printfactory.com>], it was held that speculating in Domain Names is lawful business model.
Kindly Note: Even a recent article Panels Consistently Find That “Domain Investing” Is Legitimate Bona Fide Offering states that Panelist have consistently found that “Domain Investing” is legitmiate Bona-fide offering. Further refers: “Generic domain name reselling is considered to be a legitimate business so long as it does not appear that the Respondent attempts to target the Complainant’s mark.”
In order to prove bad faith registration, it must be shown that Respondent registered the Domain Name not because of its common generic or descriptive meaning referring to OYO LIFE, but rather specifically because it corresponded to protected trademark. This reflects the intent required in the Policy, as the Panel stated in Ancien Restaurant Chartier v. Tucows.com Co, WIPO # D2008-0272:
“It is in general essential to finding of bad faith registration and use under the Policy, that Respondent must have targeted Complainant or its trade mark, or at least had Complainant in mind, when it registered the disputed domain.”
To quote Gerald M. Levline (Domain Name Arbitration – Pg 191) “A Panel has to resolve whether in registering the Domain Name, Respondent intended to take advantage of the Complainant’s mark at that time.” That is, it is quite important to establish that Domain Name was registered in Bad Faith, in addition to the Bad Faith use, that is both should be proved separately.
The Respondent registered the disputed domain name several years after the adoption of the mark OYO by the Complainant. Furthermore, the trademark OYO has not been used by anyone other than the Complainant. It is obvious that it is the fame of the trademark that has motivated the Respondent registered the disputed domain name. The primary aim of the Respondent is to take advantage of the goodwill and reputation associated with the Complainant’s trademarks.
The evidence overwhelmingly supports the conclusion that the Respondent registered the disputed domain name in bad faith. The fame and unique qualities of the trademark OYO, which was adopted and applied for by the Complainant well prior to the registration of the disputed domain name, make it extremely unlikely that Respondent created the disputed domain name independently without any knowledge of the Complainant’s trademark. Even constructive knowledge of a famous trademark like OYO is sufficient to establish registration in bad faith.
Moreover, paragraph 2 of the Policy implicitly requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. The obligations imposed by paragraph 2 are an integral part of the Policy applicable to all registrants, cannot be ignored.
In order to prove bad faith registration, it must be shown that Respondent registered the Domain Name not because of its common generic or descriptive meaning referring to OYO LIFE, but rather specifically because it corresponded to protected trademark. This reflects the intent required in the Policy, as the Panel stated in Ancien Restaurant Chartier v. Tucows.com Co, WIPO # D2008-0272: “It is in general essential to finding of bad faith registration and use under the Policy, that Respondent must have targeted Complainant or its trade mark, or at least had Complainant in mind, when it registered the disputed domain.”
Respondent did research about the registered Trademarks in November 2018 in terms of para 2 of the Policy as referred by the Complainant, while OYO LIFE never existed and mark starting with OYO was registered under other Trademark Classes by numerous businesses but never under class 44 (Health Services) till November 2018. Moreover, word OYO was the name of geographical place, had generic meaning in Japanese language and already used by numerous businesses in India itself, gave the Respondent confidence in going ahead with the registration of the Domain Name. Further, how the words were coined by the Respondent has already been explained above.
Respondent while in Health Care sector, registered many health related domains, mostly registered in 2018-2019 [Annexure 1(c)], as follows:
- NoDiabetes.in – registered on 10 June 2012
- PrimeLife.in – registered on 16 July 2018
- UnisonLife.com – Created on 10 October 2018 (Unison means simultaneous performance or utterance of action or speech)
- VittaHealth.com – registered on 2 Jan 2019 (Vitta means – band or stripe of colour)
- Volarelife.com – registered on 13 Feb 2019 (Volare is the Latin and Italian verb to fly; adding an acute accent on the final e (volaré) it is also the Spanish word for I will fly)
- AthlonHealth.com – registered on 27 April 2019 (Athlon means Contest)
In this case, Respondent was the first to coin the keywords “OYOLIFE” as contained in the Domain Name for the reasons explained above. There has been no evidence by the Complainant, which even purports to show that Respondent actually was aware or ought to have been aware of the complainant’s pending mark “OYO LIFE” at the time of registration of the domain. the same was later admitted by the Complainant when a procedural order seeking clarifications on the said fact was issued by the Panelist, during the proceedings. In Lumena s-ka zo.o. v. Express Ventures LTD, NAF # FA94375 (2000) finding no bad faith where the domain involves generic term, and there is no direct evidence that Respondent registered the Domain Name with the intent of capitalizing on Complainant’s trademark interest.
In the very recent matter of xHamster IP Holdings Ltd v. Kevin Adamson [NAF # FA1907001853032; 15 August 20119], it was held that given the Respondent’s registration of the disputed domain predates Complainant’s proven rights in the XHAMSTER mark, the Panel declines to find bad faith under the Policy. See WIPO Jurisprudential Overview 3.0 at ¶ 3.8.1 (“… where respondent registers a domain before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”)
It is worth pointing out that neither the Respondent has ever approached the Complainant for sale of the Domain Name, nor has provided any reference to the Complainant on the disputed Domain. Moreover, Respondent rights over the domain name pre-date the pending mark “OYO LIFE” which never existed in 2018. As the Complainant seems to have just conceptualized the name “OYOLife” on 29th January 2019, with the registration of OYOLIFE.jp and thereafter applied for Trademark on 26 April 2019 for OYO Life, while the disputed domain <OYOLIFE.COM> has registration date 27 November 2018. In Riveron Consulting v. Stanley Pace [NAF # FA1002001309793; <riveron.com>], it was held that while Complainant currently has trademark rights in the at-issue mark by virtue of its RIVERON trademark registration, such rights do not magically relate back to the time that Respondent first registered <riveron.com>, time well prior to Complainant’s first use of its mark.
Though the Respondent never approached the Complainant for sale of the disputed domain but it is otherwise. On Jan 30th 2019, Respondent got call/SMS from +91 879096****, the person who introduced himself as Mr A. Paliwal and expressed that he wanted to build out blog on the disputed domain and enquired about the price of the Domain Name. But without knowing the identity of the said caller, Respondent was not comfortable in disclosing many details and did not discuss and in any case never offered the domain for the same to the Complainant company.
The Panelist Mrs Harini Narayanaswamy, mainly based her conclusions as follows with respect to the second and third condition of the policy, even after failing to come to any concrete circumstances in favor of the Complainant:
It is well established that mere arguments or conclusory statements that the domain name corresponds to a dictionary term or phrase will not suffice. A respondent is required to provide evidence to support its contention of use in accordance with the dictionary meaning of the term. The Respondent has not provided any such evidence of actual use or proposed used that would correspond to the dictionary meaning of the terms “oyo” and “life”. The Panels finds, based on the submissions made by the Parties that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Given the wide use of the Complainant’s OYO mark and as discussed in the previous section, the Respondent has not demonstrated or provided convincing evidence as to how the Respondent proposes to use the disputed domain name within the generic meaning of the terms, the Panel finds the registration of the disputed domain name was in bad faith. Under the circumstances discussed, when the disputed domain name is not being used by the Respondent, passive holding amounts to bad faith use. Furthermore, any future contemplated use of the disputed domain name by the Respondent which contains the OYO mark is likely to mislead the public as to its origin, source or affiliation. The Panel finds that the Complainant has fulfilled the third element under paragraph 4 (a) of the Policy, that the disputed domain name has been registered and is being used in bad faith.
And hence UDR Panelist ordered for the transfer of the Domain Name…
Read Complete decision here: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2019-1979
The decision has been highly criticized by experts as not based upon proper conclusions and/or concluded upon the old theories where you are required to show actual use of the domain name. Further, the Panelist looks into the future use of the Domain Name, which is never analyzed under a UDRP Policy but only if the Domain Name was registered and currently being used in Bad Faith. Though the evidence adduced by the Respondent proved beyond any doubt that the Registration of domain name OYOLIFE.com was never in Bad Faith.
Even under a procedural order issued during the proceedings, the Panelists asked Complainant to provide evidence of use of the OYO LIFE mark prior to November 27, 2018, the date of registration of the disputed domain name. The Complainant in reply to the procedural order, stated there was no evidence of use of the mark for the period mentioned in the procedural order. The Respondent replied and reiterated that evidence of media coverage for the mark OYO LIFE is only after February 2019. This is clearly proved that Domain Name was never registered in Bad Faith, provided:
- The Respondent has registered more domain names with Suffix LIFE during the said period.
- The Complainant has not invented the mark ‘OYO’ and was not the first Company to put mark ‘OYO’ to use.
- A three-letter mark like ‘OYO’ is otherwise also subject to numerous interpretations and also has generic meaning, refers to a geographical place in Nigeria, etc.
- There were numerous businesses that use the mark ‘OYO’ under different classes, while the Complainant just made use under class 35, 39, 42 and 43 Trademark classes.
- The most relevant class for the Respondent was Class 44 as he belonged to the Health Industry.
- The assertions were supported by an Affidavit, notarized in India.
It was very clearly clarified that the Domain Registrant had no knowledge of the Complainant’s business OYOLIFE and as a result, the matter was quite in favor of the Respondent, given the evidence produced but has not been majorly referred in the decision, as per our understanding.
Moreover, even otherwise if this matter is interpreted to be a close call, the UDRP matters tend to get dismissed, and the parties are required to approach the court for necessary help, as UDRP Policy is for sorting out cases of CyberSquatting. Similar position was held in the matter of Adaptive Molecular Technologies Inc. v. Priscilla Woodward and others [D2000-0006] (The existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy).
Even remarkably, in the matter of Audi AG v. Stratofex [Case No. D2012-1894], the Panelist held that “The Respondent has provided a plausible explanation of the reason he registered the Domain Name. Passive holding should only result in a finding of bad faith if the panel considers that the reason why a domain name was registered was for the purposes of cybersquatting.This is not the case in this proceeding.”
Also in the matter of Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”).
That is, in any case, the matter should have been dismissed given the strong evidence adduced before the panelist, as it was not a case of CyberSquatting and even if considered as a close call, it should have been, in any case, concluded to be out of the scope of UDRP Policy. And in no case, future Trademark Rights in OYOLIFE could magically relate back to the time that Respondent first registered the domain name, while ‘OYO’ is a weak mark, provided the wide use of the term by numerous third parties in different classes, as provided above.
Further, when the Complainant can adopt a mark which was already in use by some other company under a different class, why the Domain Registrant is not allowed to adopt the said mark under different classes. In SK Lubricants Americas v. Andrea Sabatini [WIPO # D2015-1566 <ZIC.com>], it was held; “the Panel agrees with the Respondent that three letter acronym of this type is likely to be of general application to many interested parties, and no one party is likely to be able to claim a monopoly on the use of the acronym in all fields of activity.”
How come Complainant is only the privileged one. Moreover, when more businesses have adopted the same in other classes as well even till recently in 2018, why Respondent legitimate interests have been ignored by the UDRP Panelist ???
The Panelist in the matter Mrs Harini Narayanswamy is also an Arbitrator under INDRP Policy, wherein we observed that in her over 65 INDRP decisions rendered over her term as an Arbitrator, she has just denied a single Complainant of Singhania.net.in (INDRP/384) that only as parties were related and there was a civil disputed among them. Otherwise, it is highly surprising how come there has been no circumstance for the said Arbitrator/Panelist to deny any more Complaints.
Lastly, during the said UDRP Proceedings, the Panelist issued a Procedural Order only asking for information from the Complainant, while never any further opportunity was provided to the Respondent to try to clarify what legitimate interests he has, though the Complete decision is based upon single reasoning of passive holding of a domain name, though proper circumstantial evidence existed otherwise.
Moreover, when the Panelist took almost two months for the UDRP decision after her appointment as a panelist, that is, she had all the time to consider the facts and circumstances of the matter or seek clarifications from the Respondent as well, which indicates some bias towards fame of the Complainant Company and parties have not been treated at par and it is a case for the violation of the right to equality of the Respondent as well.
In any case, this is a landmark decision, as OYO Room claim as to exclusive rights to the mark OYO have been dashed. Otherwise, Complainant pretended that it coined the term, “OYO” and that it is the only one on earth that is entitled to use it !
Update as to Court Proceedings:
Appropriately, Mr Kannan has filed for the Injunction against the order before Bengaluru Civil Court and the transfer of the Domain Name has been stalled for now. The parties will battle it out in the Court of Law, though it should have been ordered by the Panelist herself and the case would have been more appropriately dismissed !!!