Its our.in | India's Pride
Empire Flippers LLC (EmpireFlippers.com) filed for a UDRP over it’s competitor Jamkain Media Ventures Ltd, India owners of BuySellEmpire.com in December 2020, claiming exclusive rights to the word ‘Empire’. Though it is not uncommon to find the user of the word ‘Empire’ by many brokers in the USA as their brand name (see here).
In any case, ‘Empire’ is a generic term to refer to large businesses / corporations, while both the parties have been engaged as a broker in helping Internet users buy and sell online businesses / websites. Like we have our own Daaz.com as a marketplace for domain names, while these are marketplaces for busing / selling of websites.
Background
BuySellEmpire.com (BSE) (est. 2018) is the leading and ONLY marketplace in India to buy and sell online businesses. Buysellempire is among World’s Top 10 online marketplaces to buy & sell profitable online businesses:
- Funded and incubated by the government of Jammu & Kashmir.
- DPIIT approved by the government of India under startupindia program.
While, the complainant EmpireFlippers.com (EF) (est2013) is one of the competitors of BuySellEmpire; Located in USA.
UDRP – A domain dispute policy laid down by ICANN under which domain holders of some specific gTLDs (.com, .net, .org) and few other TLDs are under obligation to respond in terms of Domain Registration Agreement, in case Complaint is brought under the Policy. Located in the USA. That is different from INDRP, wherein complaints related to ccTLD domain anmes come up.
NAF – (also called adrforum) one of the arbitration agencies, based in the USA, appointed by UDRP to settle disputes. All decisions are legally bound irrespective of the location of domain name holders. It is different from WIPO, which is more preferred for UDRP complaints.
Domain Name Dispute
On 16th Dec 2020, Empire Flippers LLC filed a complaint with UDRP that disputed domain name <buysellempire.com> is similar to Empireflippers trademark, even when they are phonetically different. Further, US based Empire Flippers, LLC claimed that the disputed domain name BuySellEmpire.com have copied the dominant part of their mark “Empire” and also the site is copied (both read buy and sell Quality Website/Business), etc. And prayed for the transfer of the domain name.
EmpireFlippers is a registered Trademark in the USA and has been operating since 2013. But BuySellEmpire.com was registered since 2017 and has been actively operating since 3 years with active listing of businesses over $3M. It also has a Trademark application pending in India, funded by the government, recognized as DPIIT startup under startupIndia program, etc. Therefore, held to have legitimate rights in the disputed domain name.
Mainly the EmpireFlippers were trying to show they just discovered about BuySellEmpire recently, but the parties already had communicated in 2018, the evidence was produced by the Respondent and since then BuySellEmpire had tremendous growth… demonstrable preparations were quite visible in terms of the UDRP Policy and hence legitimate interests upheld.
Further, given the generic nature of the keywords in the domain name, no Bad Faith could be presumed. In any case both the Companies involved in Buying and Selling of Empires, i.e. large businesses. Hence, Complaint Denied.
The matter was sucessfully defended by Law Ankur Raheja, Cylaw Solutions, India.
Complete decision: https://www.adrforum.com/DomainDecisions/1925050.htm
Why would anyone file a domain dispute if you purchased domain name legitimately ?
For variety of reasons:
- Take hold of your domain names for varied reasons.
- Destroy competition by abusing this process of law.
How does it relate to Indian Companies?
- Like mentioned before, you will be forced to fight in USA jurisdiction if your domain company is a USA entity; even if you are a registered Indian company or trademark holder of that domain in India like us, or even a revenue generating company in india.
- If you win, fine. But if you lose, your domain name will be transferred to the Complainant within 10 working days and there is nothing you can do about it.
- You can’t fight this or stop this transfer in even Indian courts because when you registered your domain, you agreed to jurisdiction* of the domain’s company i.e mostly USA in terms of service which is usually written in very fine print.
It may be noted that approx 85-90% of such domains subject to UDRP get transferred. Only the lucky ones survive.
* Jurisdiction Issue – If anyone who has purchased a domain name from Godaddy.com or even from any other domain registrar with a principal office located in Scottsdale, Arizona, USA; all such domain name holders even located outside of the USA will be forced under jurisdiction of the USA.
Refer to https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en
Points to note –
- Godaddy has a registered office in India too.
- Customers pay Godaddy after watching Ads of MS Dhoni promoting Business bhai campaign; thinking its Indian entity.
- Customers even make payment in INR along with GST, like BuySellEmpire did.
Still, all Indian customers will still be forced under the jurisdiction of the USA because Godaddy maintains a principal office in the USA, not clearly declaring it to customers at time of domain name registration.
Mr Ansh Gupta, owner at BuySellEmpire.com adds: “If you read the judgement, you will notice that we won by very thin close calls. Had we lost, our business would have been gone, the domain would have been transferred to our competitor. We would have had to spend lakhs and lakhs of rupees on lawyers to fight additional court cases in the USA.
Every startup company may not have enough funds to hire lawyers and fight such things in the USA. Their companies will be taken away forever. We are happy that we won and now want to educate others online business owners on such important issues regarding your online companies.
Now we are moving all our 80+ domains to Indian based registrars such as Bigrock or PDR to keep jurisdiction in India. We suggest everyone take this as a lesson. Because all such Indian companies are at risk.We will also be writing to the government of India to look into this important matter for online companies.”
