US based Trijicon, Inc. is in the field of providing precision aiming solutions under the brand ‘Trijicon’ for law enforcement, military, and private individuals since 1981and has presence all over the world including Canada, Austria, Belgium, Singapore, United Arab Emirates, United States of America as well as India.
Trijicon brought complaint as to domain dispute under INDRP procedure over domain name triicon.in, alleging cybersquatting and infringement. In India it holds registration under class 9 and 13.
The decision reads as follows as to Trademark confusing similarity:
The main question before the Panel is that whether the word ‘Triicon’ is identical or confusingly similar to the Complainant’s ‘Trijicon’ mark. In the case of Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical [1965 AIR 980], regularly relied on by courts in trademark infringement cases, the Hon’ble Supreme Court had held:
“…where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.”
“The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiff’s trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade.”
Additionally, mforest Laboratories, Inc. v. Natural Products Solutions LLC Case No. D2011-1032 andforesf Laboratories, Inc. v. Clark Grace Case No. D2011-1006, the WIPO Panel stated:
“Typosquatting involves the intentional rearrangement or change of one or a few letters in a mark to make a nonsensical but close imitation, deliberately intended to catch a tired or careless typist’s search for the mark owner’s website. Usually the added or substituted letter or addition involves a character immediately adjacent to the replaced one, see, e.g., Amazon.com, Inc. v. Steven Newman a/k/aJill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517; always the variant makes no sense standing on its own. That is not so in these proceedings. Here, the Respondent chose the domain names because they are (exactly) the name of his own product.”
Based on the facts of the present matter and the evidence provided before the Panel, it is the Panel’s opinion that the marks Triicon’ and ‘Trijicon’ are not identical or confusingly similar in the present setting. The disputed domain name and the Complainant’s mark are neither phonetically nor visually similar and the present mater is not a case of typosquatting.
The Panel does not agree with the Complainant’s contention that the absence of the letter ‘J’ in the disputed domain nameis minor or negligible and that it does not alleviate the fact that the domain name is deceptively similar to the Complainant’s mark ‘Trijicon’. In fact, the absence of the letter T in the disputed domain name is the main reason which makes the domain name and the Complainant’s mark entirely different.
While the Panel accepts the Complainant’s contention that its mark and the corresponding business isfamous, it is unable to accept that the disputed domain name is identical or confusingly similar to the Complainant’s ‘Trijicon’ mark.
The Complainant has thus failed in establishing the first element required by Paragraph 4 of the INDRP.
Further, while analyzing Legitimate Interests, the Panelist / Arbitrator stated:
While the Complainant has submitted that the Respondent is engaging in ‘criminal fraud’ and ‘phishing’ through the disputed domain name, it has failed to provide any evidence which could establish this. The Complainant has based these assumptions on the fact that as per the MX records of the disputed domain name, e-mail ids have been set-up on the domain name; and that additionally there is no operational website on the domain name.
In the Panel’s opinion, the mere fact that e-mail ids have been set-up by the Respondent on the disputed domain name does not establish in any way that such e-mail ids [if any] are being used to impersonate the Complainant. Additionally, the absence of a website on the domain name in this case does not necessarily mean that the Respondent does not have any rights or legitimate interests in the domain name – especially considering the fact that the domain name was registered in May 2020, and that it is perfectly reasonable for registrants to take a few months or more for developing their website.
Thus in the absence of any demonstrable evidence which could have indicated the Respondent’s lack of rights or legitimate interests in the domain name, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name.
Lastl as to Bad Faith, the Panelist / Arbitrator held:
From the circumstances of the case and from the evidence put forth before the Panel by the Complainant,the Panel is of the opinion that the Respondent has is no manner attempted to encash on the goodwill and reputation of the Complainant and their mark ‘Trijicon’.
The submission made by the Complainant that the Respondent is using the disputed domain name for e-mails does not help establish the Respondent’s bad faith. The Complainant has not submitted any evidence which would indicate that the Respondent’s use, if any, of such e-mails is detrimental to the Complainant. There is no evidence that the Respondent is using the e-mails to impersonate the Complainant or to engage in a ‘spear-phishing campaign’ -as submitted by the Complainant.
The Respondent has not tried to portray an association with the Complainant and their brand; and has not contacted the Complainant to ‘sell’ the domain name. None of the elements essential for a ‘bad faith’ finding are present in this matter. Furthermore, the Panel is of the opinion that the use of the disputed domain name by the Respondent, would not result in confusion with the Complainant or their mark ‘Trijicon’.
That is none of the INDRP conditions are held to be satisfied and hence the Complaint has been denied:
For the purposes of this Policy, and based on the evidence put forth before it, the Panel finds that thedomain name is not identical or confusingly similar to the Complainant’s trademark ‘Trijicon’. Moreover, the Complainant has not been able to establish that the Respondent has no rights or legitimate interests in the domain name and that the domain name was registered or used in bad faith by the Respondent.The Complainant has thus failed to prove the grounds provided in Para 4 of the Policy.
While the Panel notes that the Complainant’s trademark ‘Trijicon’ is a famous and popular mark, the Panel has ruled on the specific aspect of the impugned domain name -within the limited confines of the Policy.
The Panel, in accordance with the INDRP Policy and Rules, hereby denies the complaint; anddirects that the disputed domain name [www.triicon.in] remain with the Respondent.
Rodney D. Ryder Sole Arbitrator
Date.-November 5, 2020
Our.in team appreciates a wonderful decision by a INDRP Panelist !