An interesting UDRP arbitrage happened just recently. The domain msdhoni.com was lost by defendant in an obvious case of cybersquatting. We decided to publish it as it’s related to India and also to illustrate the errors of domaining.
In India everybody knows who is M. S. Dhoni, but for those from oversea lands and not interested in cricket – he is a captain of the Indian national cricket team with a status of celebrity.
The complainant in that case was Mr. Mahendra Singh Dhoni and Rhiti Sports Management Private Limited [the company responsible for managing Mr. Dhoni’s trademark portofolio] and was represented by Mr. Rodney D. Ryder, a cyber law expert and Managing Partner of Scriboard® (a full service law firm based in New Delhi, India).
Scriboard argued that the mark ‘MS DHONI’ was a well-known and famous mark throughout the world and that the use of the domain name msdhoni.com by the Respondent amounted to trademark and personality rights infringement which may lead to public confusion and mistrust as the visitors may assume that the domain name and its content was being made available by Mr. Dhoni or Rhiti Sports.
It was also contended that the term ‘MS DHONI’ was generally referable to Mr. Dhoni and that there was no evidence of anyone else known by that combination of initials and name as being famous or having any commercial activity. Moreover, the fact that the domain name had pay-per-click advertisements and was being offered for sale was also brought to the attention of the Panelist.
What’s surprising, subsequent to the filing of the domain name complaint, the Respondent wrote to Scriboard® offering to sell the domain name for 1500 USD. This in itself proved the malafide and bad faith intention of the Respondent.
The Panelist held that the even though the Complainants had trademark registrations for the mark ‘MS DHONI’, they had also established unregistered trademark rights in the mark ‘MS DHONI’ due to its active use in trade and commerce. The Panelist further noted that that the Respondent had no legitimate rights or interests in the domain name and had registered and was using the domain name in bad faith.
According to Rodney D. Ryder, who represented MS Dhoni and Rhiti Sports, it was ‘imperative to secure this important and valuable digital asset’. He added, ‘the securing of the domain name is an important part of the overall brand strategy. There is a serious potential of misuse. This case, from the WIPO Arbitration and Mediation Center, Geneva, is an important global trademark precedent for the already famous and well-known brand, MS Dhoni’.
In summary, I would like to highlight the most important points which led to the domain lose by the defendant:
1. The domain name “msdhoni” is not generic in nature and cannot be resolved for many meanings. There is no other famous person known as “M. S. Dhoni”.
2. “MS DHONI” is a registered trademark in the Indian Government database (for example in the class 3). It is also worth to notice that according to the panelist the complainant has gained unregistered TM rights in the mark ‘MS DHONI’ due to its active use in trade and commerce.
3. The defendant listed the domain for sale and offered to sell it to the complainant legal representative even after the latter filled the case.
4. The domain was parked and displayed advertisements. It is known that domain owners have very little control over displayed ads on parked pages and that alone may lead to a trademark infringement.