Its our.in | India's Pride
The Complainant in the matter of generic domain name TICKETS.in have been denied. This is indeed a landmark decision as it talks about domaining and the changing trends. Specifically it states in respect of the disputed domain name that was registered on 17 February 2005 along with more generic domain names:
“… Investment in generic domain names is like an opportunity to Invest in a virtual property as soon as some new domain TLD is launched with future expectations. It can be compared to a situation when a new area/locality starts developing and people start investing in real estate and look forward to a long term investment or even a stock Investment in IPOs. This seems to be the only conduct of the Respondent, either he may carry on the business upon it or sell a domain name, of course subject to the law of the land. Though in any case, NIXI’s policies only restrict Domain Registrar’s from sale over and above the normal price”.
Further, it made a comparison between cybersquatting and domain investing. Moreover, it is only the second time in the history of INDRP, that a Complainant has been held to be an attempt of Reverse Domain Name Hijacking. Previously in the matter of Computer.in (INDRP/008).
Parties:
Complainant is Tickets Worldwide LLP (“Complainant”), United Kingdom, represented by Ms. Divya Balasundaram of M/s Inventure IP, Noida, India. Respondent is India Portals (“Respondent”), Mumbai, India represented by Mr. Ravi Goyal of M/s Scriboard, New Delhi, India.
Facts (by Parties):
In the matter, Complainant claimed to have presence in India, since registration of it’s officiala website TICKETS.ORG.IN. Though, the Trademark was applied in India only in 2015 under class 39 as wordmark and got registered on 15 March 2019. Complainant claims that its reputation and brand knowledge was already spread across in India, earlier to 2006. It has been claimed to have got Indian media attention and has a presence on Social Media sites like Instagram, Telegram, Github.
The Respondent has registered various domain names including government.in, cricket.in, mail.in, love.in, education.in, video.in, work.in, tech.in, ticket.in, portal.in, training.in, software.in and so on. A finding has been made against the Respondent in Case No INDRP/346 for wrongly registering ‘champagne.in’.
Respondent’s domain name is identical or confusingly similar to Complainant’s Trademark, as it incorporates the Complainant’s mark in full. Complainant has not authorized or licenced the Respondent to apply for, register or use or offer for sale the disputed domain name or any trademarks forming part thereof.
The Respondent is neither known by the disputed domain name as per WHOIS information nor owns any trademark or service mark rights in the name and mark TICKETS. The domain name is merely parked and no demonstrable preparations to use the domain name has been made. Hence, no legitimate use of the domain name being made. Complainant further contends that domain name has been registered in Bad Faith, as Respondent has passively held the domain name since registering it.
Further, Complaianant claimed that there is a potential danger that the Respondent may use the disputed domain name in future or sell it to any third party including Complainant’s Competitors and any such use would be unauthorized and cause confusion.
The Complainant has mentioned three main domain names owned by it:
a. tickets.org.uk – registered in 1998 and active since 2015-2016 as per Archive.org.
b. ttm.org – registered in 2003 and not used till 2013 as per Archive.org.
c. tickets.org.in – registered since 2006, whois owner has the name Tickets TM LLC, but not used till 2013. Since 2016, said domain name appears to have had a website under the brand name ‘TICKETSUA’ and in mid 2017 the disputed domain had a ‘COMING
SOON’ web-page.
Respondent submmitted that these web-pages clearly stated that the Complainant commenced operations in 2009 as opposed to what it has falsely claimed in the Complaint. Further, it can be conclusively established that in all the cases, the domain names were not used by the Complainant for its alleged business of selling flight tickets under the trademark ‘TICKETS’ until at least 2013. Additionally, there is a strong possibility that the Complainant was not the original and first registrant of the domain name [tickets.org.in] as it claims to be.
The Date of First Use of the trademark ‘TICKETS’ in the Indian application is provided as September 08 2006, which was originally claimed as May 29, 2009. Subsequently, they tried, on the basis of the registration date of <tickets.org.in>, to attempt to get an earlier date of use for the trademark – probably to take action against the Respondent.
Moreover, the Complainant has not produced any documents which could establish that the word ‘TICKETS’ has a strong reputation or widespread use as a brand of the Complainant. No documents relating to sales turnover, invoices, annual returns, customer surveys, media recognition, etc. have been produced.
It is submitted that there are many entities and businesses offering ‘TICKETS’ as part of their services or business model. The Complainant cannot assert exclusive rights on such a generic term which is used by members of the public in the context of the general meaning and definition of the word ‘TICKETS’. The Respondent has rights and legitimate interests in the impugned domain name. It is pertinent to mention here that the Respondent is the prior user of the mark ‘TICKETS’. It registered the impugned domain name on February 17, 2005 and has not transferred or otherwise sold or offered to sell the domain name since the date of registration.
Decision (by Arbitrator Ankur Raheja):
The trademark registration constitutes prima facie evidence of the validity of trademark rights. Moreover, when a domain name wholly incorporates Complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy under the first clause of the Policy. While the legitimate interests was not cosidered as no bad faith proved under the last clause:
The Complainant has failed to prove why the Respondent knew or should have known of the existence of the Complainant use of brand ‘TICKETS’ at the time of registration of the Disputed Domain Name, when the same was applied as a Trademark in India in 2015 only, that is, after a gap of 10 years. The disputed domain name has been registered since 17 February 2005, while the Complainant claims the use since 2006, in accordance with the WHOIS registration date of its Indian website <tickets.org.in>. The Complainant further claims that its knowledge and reputation had already spread across India before 2006. Though, the Archive.org shows no use of Complainant’s domain name – ttm.org, tickets.org.uk, tickets.org.in till the year 2013, as claimed by Respondent as well.
It is generally accepted that for a bad faith registration, (i) the Respondent must have been aware of the Complainant or its trademarks when it registered the Disputed Domain Name, and (ii) the registration must in some way have been targeted at the Complainant or its trademark, for example by seeking to capitalize on it [Knud Jepsen A/S v. Rick Schwartz, Virtual Dates Inc., WIPO Case No. D2017-0679]. Further where a domain name has been registered before a Complainant has acquired trade mark rights, only in exceptional cases would a Complainant be able to prove a respondent’s bad faith (see WIPO Overview 3.0, sections 1.1.3 and 3.8). This is not such an exceptional case [Scalpers Fashion, S.L. v. Dreamissary Hostmaster WIPO Case No. D2019-2937].
The main evidence as to use of the Complainant’s domain names <tickets.org.uk>, <ttm.org>, <tickets.org.in> since 1998, 2003 and 2006 respectively based upon the WHOIS registration date is in itself contradictory with the Archives (archive.org) for the said domain names available online. In Eterno Infotech Pvt. Ltd. V Zheng Wei [HuntNews.in – INDRP/782], it was held that evidence from Internet Archive – Archive.org is considered a reliable source of evidence, wherein the changes made upon the disputed domain since filing of the case, were considered for determining Bad Faith. Moreover, while Complainant currently has trademark rights in the at-issue mark, such rights do not magically relate back to the time that Respondent first registered disputed domain name, time well prior to Complainant’s first use of its mark. [Riveron Consulting v. Stanley Pace [NAF # FA1002001309793; <riveron.com>].
Therefore, given the information as to historical use of the domain name and further information as to exchange of hands of two of Complainant’s domain names publicly available online. In fact the domain name <tickets.org.in> was sold on 10th or 11th June 2013 on SEDO platform in an auction for $300 (information available at inforum.in, the.in, dnpric.es and tldinvestors.com), while in another auction before 11 July 2013 at Namejet.com, <ttm.org> was sold for $609 (source: domainsalescenter.com), that is acquired/purchased by the Complainant in 2013 from an existing user. Though as for the first sale which is more relevant to the matter, an opportunity of being heard was provided to the Complainant, they failed to provide any proper information. Though, Complainant tried to provide some documents from SEDO related to the year 2015 (including one in German) and others had no relevance (including new reference to www.heidpark.de) to the specific information sought for the year 2013 as to purchase of domain name <tickets.org.in> by the Complainant at SEDO.
Further, historical WHOIS records as well point to the fact that the WHOIS for domain name <tickets.org.in> and <ttm.org> for the first time was changed in Complainant’s name in June and July 2013 respectively.
A) Following is the WHOIS record for domain name <tickets.org.in> made available by NIXI for 27 June 2013, referred to as a significant change, within the same month of purchase of the Domain Name.
WHOIS information from 2013 after June 2013
On 2013-06-27, 11 events were recorded. The following are the significant changes that occurred:
- Billing contact changed
- Transfer/Renewal from registrar 8067-EP (<UNKNOWN>) to 8173-GO (GoDaddy)
- Billing, admin, tech and registrant changed
- Name servers removed
- Name servers added
The remainder of the events were changes to the domains status and authInfo.
The final change to the object was made on 2013-06-27 11:39:56.
Domain Name: tickets.org.in
Registrar ID: 8137-GO
Creation Date: 2006-09-08 21:55:33
Registry Expiry date: 2014-09-08 21:55:33
Registry Registrant ID: CR146151145
Registry Admin ID: CR146151149
Registry Billing ID: CR146151151
Registry Technical ID: CR146151147
Name Server: NS51.DOMAINCONTROL.COM
Name Server: NS52.DOMAINCONTROL.COM
Last Updated Date: 2013-06-27 11:39:56
Contact ID: CR146151145
Creation Date: 2013-06-27 10:53:15
Name: Bogdan Shevchuk
Organization:
Street: 57-67 Lexh** Gard***
Street:
Street:
City: London
State/Province:
Postal Code: W8 6JJ
Country: GB
Phone: +44.7937******
Phone Ext:
Fax:
Fax Ext:
Email: ******[email protected]
B) The WHOIS Information for <tickets.org.in> till May 2013 was in the name of the domain name company from Germany: Checkdomain GmbH, with name servers as ns.checkdomain.de and ns2.checkdomain.de (Last Updated on 2012-09-08 22:30:46
archived on 21 May 2013 at DomainTools.com and exactly same information as to September 2012 shared by NIXI as well with same exact WHOIS update date and time).
C) The above WHOIS record for <tickets.org.in> was again changed on 15-July-2013, as per the next WHOIS record for domain name <tickets.org.in> archived at DomainTools.com on 21 July 2013 (Last Updated On:15-Jul-2013 12:05:35 UTC). The
same were updated in the same US details as provided for Complainant’s another domain name <ttm.org> below.
D) Following is the WHOIS record for domain name <ttm.org> archived at DomainIQ.com on 14 October 2013, showing for the first time details of the Complainant WHOIS update date as 29-Aug-2013, just a month after purchase of the Domain Name. The
archives from Archive.org further support these findings as submitted by the Respondent as Annexures.
Domain ID: D98223421-LROR
Domain Name:TTM.ORG
Created On:03-Jun-2003 20:12:08 UTC
Last Updated On:29-Aug-2013 05:04:58 UTC
Expiration Date:03-Jun-2015 20:12:08 UTC
Sponsoring Registrar:GoDaddy.com, LLC (R91-LROR)
Status:CLIENT DELETE PROHIBITED
Status:CLIENT RENEW PROHIBITED
Status:CLIENT TRANSFER PROHIBITED
Status:CLIENT UPDATE PROHIBITED
Status:TRANSFER PROHIBITED
Registrant ID:CR149884252
Registrant Name:Bogdan Shevchuk
Registrant Organization:TICKETS TM, LLC
Registrant Street1:101 N. Bra** Bl**, 11th Floor
Registrant Street2:
Registrant Street3:
Registrant City:Glendale
Registrant State/Province:California
Registrant Postal Code:91203
Registrant Country:US
Registrant Phone:+1.9168******
Registrant Phone Ext.:
Registrant FAX:
Registrant FAX Ext.:
Registrant Email:****@ON5.com
P.S. Registrant Address, Email ID and Phone Number, have been partly hidden, so that there are no privacy concerns. But the WHOIS files can be shared separately by the Arbitrator, if either party in the matter requires more information.
Moreover, filing of TM-M by the Complainant before the Trademark Registry on 10 October 2018 for amendment of usage date of the trademark TICKETS under class 39, resulted in the change of usage date of Complainant’s mark has from 2009 to 2006, purely upon the date of WHOIS details of domain name <tickets.org.in>, which indicated domain name registration by previous owner as Creation Date: 2006-09-08T21:55:33Z. The said act has been referred by the Respondent as probably an attempt by the Complainant to take action against the Respondent in these domain dispute proceedings. While the website at <ttm.org> refers to Complainant’s name for the first time in January 2014 as per Archive.org.
As for the third domain name <tickets.org.uk> claimed to be registered in 1998, the first page was archived on 23 May 2013, having a SEDO parking page. The next archive refers to the owner as [email protected] and only in 2016 for the first time this domain had an active website in the name of TICKETSUA. This very clearly proves the fact that the Complainant acquired these domain names <ttm.org>, <tickets.org.in> around mid 2013, while no active use of even <tickets.org.uk> is visible through archive, till 2016 or at least till 2013, it was not active. The information as to TICKETSUA seems to be part of evidence rendered by the Complainant before the Trademark Registry but surprisingly not referred in the Complaint for proving popularity of the mark. Moreover, ownership of TICKETSUA (now at www.tickets.ua, now owned by the Complainant as on date) has been questioned by the Respondent under the Response but again the Complainant did not respond to the same under the Rejoinder. In any case, it is not important for these summary proceedings to go into further details of those facts.
Otherwise, the Complainant owns more TICKETS domain names in different jurisdiction with different extensions including tickets.us, tickets.co.ua, tickets.com.sg, tickets.se and more. But as it was held in the matter of Century 21 Real Estate LLC vs. Century 21 Main Realty Pvt. Ltd. & Ors. [CS(OS) No. 1687/2007]: “the plaintiff has not placed on record any document to show that its reputation has travelled to India in any manner. Merely because a company is having presence in many countries in the business of reality does not mean that the company’s reputation has travelled to every single country on earth. Reputation and goodwill of a company are intangible assets and these intangible assets are to be shown to exist.
Intangible assets in India are to be proved by way of evidence. There can be no presumption in favour of a corporation of intangible assets in India merely because the company has a reputation and goodwill somewhere else. I, therefore do not consider that the plaintiff has a prima facie case of having goodwill in India or reputation in India”.
Moreover, the obligation on the part of a registrant to determine that its domain name does not violate a trademark “is not however an absolute obligation which bars any registration of any domain name if someone else, somewhere in the world, has a trademark (however obscure) corresponding to the domain name. The question of when the registration will amount to a violation of rights is one of fact and degree, depending upon many factors, such as the geographical locations concerned, the nature and scale of the trademark owner’s business, how well known and/or famous the trademark in question is and so on” [SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566].
The word TICKETS is a generic word having a dictionary meaning. By virtue of the word TICKETS being generic in nature, it is non-distinctive and thus the rights to use or own the word TICKETS cannot exist with one single entity or individual, Respondent argued. The said contentions are upheld, as it has been long held that where the disputed domain name is a generic / descriptive term, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another and trademark protection is mostly denied to them for related goods/services. In Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest. Further, in the INDRP matter of Radiantly Life v. Jeevan Deep Services Pvt Ltd. [INDRP/957 – Domain Dispute: apanaghar.in], it was held that the term APNA GHAR is a generic term and no one needs a licence or permission to use the term. Furthermore, in such cases of generic/descriptive terms, there is an even greater onus on Complainant to present compelling evidence of secondary meaning or distinctiveness, when there are various other entities using the similar mark.
Further, it has been held on numerous occasions in Indian courts as well, that no one could claim exclusive use of generic/descriptive words. Few of these cases have been quoted in the matter before Hon’ble Delhi High Court in the landmark judgment of Living Media India Limited vs Jitender V. Jain And Anr. on 21 May 2002 [Equivalent citations: 2002 VAD Delhi 161, 98 (2002) DLT 430]:
In Competition Review Private Limited v. N.N. Ojha (Competition Success Review v. Competition Review) 1996 PTC (16) 124 (Del) where both the parties had used the word ‘competition’ while publishing their journals it was held that the word ‘competition’ is a generic term and that the absence of similarity in the colour scheme, the plaintiff could not claim exclusive use of the word ‘competition’. In Rupee Gains Tele-Times Private Limited v Rupee Times (Rupee Gain v. Rupee Times) 1995 PTC (15) 384 Delhi… merely because one of the company has used the word RUPEE to name its financial journal will not mean that the said word cannot be used by any other journal nor it can mean that the journal first using the said word RUPEE has acquired trademark in the said word. RUPEE is a descriptive word not a distinctive word. Everything connected with trade and business is described by money, finances and rupee and it is for this reason that these words are repeatedly used by all the financial journals.
In the matter of Hostess Brands, Inc. f/k/a Interstate Bakeries Corporation v. Domain Capital [WIPO Case No. D2009-1357], it was held that Respondent is correct when it emphasizes that “hostess” is also a common word subject to substantial third-party use, though Complainant held a Trademark over the mark “hostess”.
Similarly, TICKETS is a very generic and descriptive term, not only used by numerous businesses globally but used in daily life by every individual as well, whether it means referring to Movie Tickets, Rail Tickets, Air Tickets, Concert Tickets and so on. In any case, no travel arrangement can be completed without issue of the tickets in the name of the travellers by any Travel Company. Undoubtedly, the Travel category is the most competitive, when it comes to online services and there are innumerable travel agencies / websites rendering similar services in India itself.
In a previous INDRP matter of Shevaldas C. Raghani v. Stephen Koenig [INDRP/008 – Computer.in] it was held “in what manner the Complainant removed this generic name ‘COMPUTER’ from the public domain and acquired a secondary meaning. The Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes the amount of sales in the preceding years, the amount spent by the Complainant on advertising, media surveys, consumer surveys etc. The only evidence is the bald claim that the mark has been under use since last 8 years, its extremely weak and inadequate evidence to prove any enforceable right in the domain name against the respondents. On the basis of the records submitted by the Complainant it’s not proved that the domain name computer.in is related to the business of Complainant. It’s merely confined to the fact that the Complainant is the registered owner of the mark computer, in relation to sarees”. Moreover, in this matter a simple search for the term TICKETS on www.google.com does not reveal any search results for the Complainant on the first page of the results and as per Complaint’s own admission, it has been active on social media since 2018 only.
That is, here as well, the Complainant was required to provide enough evidence to prove “Secondary Meaning” in respect of use of TICKETS, especially in India, which includes length and amount of sales under the trademark (Complainant only provided a figure as to global sales as on date), the nature and extent of advertising, consumer surveys, media recognition, so that consumers may relate mark TICKETS with the Complainant only. “Secondary Meaning” has been aptly defined in the case of Charcoal Steak House of Charlotte, Inc. v. Staley, 263 N.C. 199, 139 S.E.2nd 185, 144 USPQ 241 (1964) as “This is to say, a secondary meaning exists when, in addition to their literal, or dictionary, meaning, words connote to the public a product from a unique source.” It was laid down in Girnar Software Pvt Ltd V Manisha Enterprises [INDRP/712], that a word/mark is suggestive if it requires imagination, thought, reasoning process and perception to reach a conclusion as to the nature of the services involved while in case of a descriptive trade mark to reach such a conclusion is immediate and instant. While the basic difference between a descriptive mark and a generic mark is that a descriptive mark describes the services/goods while a generic mark names the particular service/goods involved.
It can be concluded that the said mark TICKETS is descriptive in nature and the Complainant needs to show that it has attained Secondary Meaning in the mark and the public relates the mark with the Complainant only. But in the said matter, the Complainant has just submitted limited evidence in support of its use of mark TICKETS as follows:
– WHOIS information of three domain names <ttm.org>, <tickets.org.in> and <tickets.org.uk>
– Trademark Registration in India and Egypt (later not in English)
– UK Company Registration Certificate
– Screenshot of the main website <ttm.org>
– List of Domain Names owned globally (with Rejoinder)
– Link to IOS Apps in different languages (with Rejoinder)
– Link to Social Media pages (with Rejoinder)
– Information as to predecessor DANA Technologies (with Rejoinder)
While the Complainant company claims that during 2018-19, the right of the Complainant to use the TICKETS as a trade name has been recognized by global Companies: Apple Inc., Facebook Inc., Telegram Messenger Inc., GitHub Inc. Furthermore, on some social media accounts name used by Complainant is <tickets.in>, to which Respondent objects and refers to the selection of ID similar to disputed domain name as unethical behavior on the part of the Complainant. In any case, social media presence of the Complainant under the trademark TICKETS is since 2018 only and no news clipping or media coverage or otherwise any proof of promotion in India has been provided by the Complainant, in order to show its popularity.
Complainant argues that the primary and overwhelming evidence of bad faith on part of the Registrant is its pattern of registering various domain names containing proprietary and common words without having any legitimate interest or right therein. Though, Complainant has not exactly pointed out a single non-generic domain name Respondent holds, except for referring to Champagne.in. In the matter of Knud Jepsen A/S v. Rick Schwartz, Virtual Dates Inc, the Panel finds no grounds for the allegation that the Respondent engages in a pattern of cybersquatting. In light of the Respondent’s area of business, the fact that the Respondent was ordered to transfer a domain name to complainants in two previous UDRP decisions is insufficient proof to find a pattern of cybersquatting, particularly in the context of a domain name portfolio which runs into the thousands [Case No. D2017-0679].
Champagne.in, a previous INDRP in 2012 against the Respondent that was mainly based upon a geographical indication rather than a Trademark, moreover Champagne is a geographical location as well. Under rejoinder, Complainant again refers to INDRP loss in the matter of ‘CHAMPAGNE.IN’ and also submits some link to a presentation made before WIPO in Geneva, where the same matter was included. But the same is quite irrelevant as to what was referred to in a presentation as a personal opinion by a third party and is not upheld, given the facts and circumstance of this case. In any case, the pattern of conduct would have been relevant in case the disputed domain name <tickets.in> was based upon a strong/distinctive mark and moreover, if it could satisfy clause 6 (ii) of the INDRP Policy, that refers to bad faith at the time of registration of the domain name.
Complainant points to passive holding of domain name since 2005 and alleges Bad Faith, but it has been long held that passive holding is not a bad faith, unless it is not possible for the Respondent to have otherwise a future website, without infringing Complainant’s Trademark. That is, unless the disputed domain name is based upon Complainant’s distinctive mark. In the matter of Warner Bros. Entertainment Inc. v. Karl Allberg [Claim Number: FA2002001881913]… the passive holding doctrine was evaluated and it was held that in this case it is not inconceivable for <dumbledore.com> to be active without infringing Complainant’s Dumbledore Marks. Passive holding in this context does not support bad faith. Further, the Respondent with the Arguments provided link to some internal confidential document running into 21 pages, containing information as to the research carried out as to various keywords contained in the domain names including some report and slides as well.
Further, in the matter of Veena Kumaravel v. Daegu Law Auction [Case No. D2019-2508] the Panel rejected Complainant’s argument that Respondent’s “passive holding” of the Domain Name amounts to bad faith. (Sadig Alakbarov v. Yuxue Wang, WIPO Case No D2088-1771). In the circumstances of this case, where the Domain Name corresponds to a descriptive word and Respondent has not engaged in any activity that might be suggestive of bad faith (e.g., such as providing false contact details, targeting a distinctive well-known trademark, or a pattern of cybersquatting), Respondent’s passive holding of the Domain Name is not evidence of bad faith.
Lastly, Complainant refers to the Respondent as similar to the business of a domainer, who has registered many domain names around the same time. Though, neither in the previous case <champagne.in> as referred by Complainant, the Respondent ever responded to the Complainant in that matter, nor is there any evidence in these proceedings of any attempt to sell the disputed domain name <tickets.in> has been made by the Respondent. Though under Rejoinder, Complainant refers to an article on a website www.our.in, where a sale by the Respondent as to Casino.in and Betting.in has been made in 2017.
It has been held in numerous UDRP decisions that domain name investing is a legitimate interest mainly when domains are generic and descriptive. As the panel noted in S.P.C.M. SA v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, WIPO Case No. D2014-0327, with reference to various decisions under the Policy, carrying on business in registering descriptive or generic domain names is not in itself objectionable, nor is offering such domain names for sale. Similarly in the matter of Virgin Enterprises Limited v. Domain Admin/This Domain is for Sale, Hugedomains.com, D2017-1961 (WIPO December 11, 2017) as for Respondent it “is a domainer which regularly registers domain names that include generic words for the purposes of selling them. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as they do not encroach on third parties’ trade mark rights.”
In simple terms, investment in generic domain names is like an opportunity to Invest in a virtual property as soon as some new domain TLD is launched with future expectations. It can be compared to a situation when a new area/locality starts developing and people start investing in real estate and look forward to a long term investment or even a stock Investment in IPOs. This seems to be the only conduct of the Respondent, either he may carry on the business upon it or sell a domain name, of course subject to the law of the land. Though in any case, NIXI’s policies only restrict Domain Registrar’s from sale over and above the normal price [refer to Registry Advisory LA 01: Sales of .IN Names by Registrars].
Even in the INDRP matter of PIAGGIO & C. S.p.A. v. Xu Xiantao (Domain: aprilia.in; INDRP/1132), it was laid that there is a difference between Cybersquatting and Speculating in domain names. As speculating in generic domain name has been held to be a legitimate business under UDRP and claims were denied in the following matters for various reasons. See Aurelon B.V. v. Abdul Basit Makrani, [WIPO # D2017-1679; <printfactory.com>], Vulf Records LLC v. Domain Admin [NAF # FA1802001771089; <vulf.com>], Fresenius Kabi S.A. v. Domain Manager [WIPO # D2018-0491; <nutrihome.com>]. In simple terms, there is a demarcation between Cybersquatting and Domain Investing. Because while former means a deliberate and mala fide action on the part of the domain registrant to try to make profits from someone else’s goodwill/trademark rights and is never allowed to anyone (under INDRP in such cases, costs can be imposed). While the latter is legitimate interest as laid down in various UDRP Precedents.
Indeed, lot has changed since the last few years and domain dispute panelists have held in favor of domain investors, who hold many generic domain names and the evidence of portfolio of generic domain names, rather helps to conclude a good faith on the part of the Respondents as it can be concluded that the Respondent generally registers generic words and has not specifically targeted the Complainant only. In Fresenius Kabi S.A. v. Domain Manager, EWEB Development, Inc. [WIPO Case No. D2018-0491] Respondent had provided evidence of other “nutri-” related domain names that it registered in the same year as the disputed domain name or in the preceding two years. The arguments were held in favor of the Respondent.
Therefore, the Arbitrator concludes that the Complainant has not been able to prove Bad Faith registration or Bad Faith use. Hence, Complainant has not been able to prove the third requirement under the INDRP.
Reverse Domain Name Hijacking, upheld:
Respondent requests that Complainant be found to have engaged in reverse domain name hijacking (“RDNH”). RDNH is “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” (in terms of UDRP). It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding.
The three-member UDRP panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, noted that where a Complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration on the issue of RDNH. The Arbitrator is of the opinion that such consideration applies to the Complainant’s conduct here. The Arbitrator finds, on the entire record, that the current matter of <tickets.in> is a case of Reverse Domain Name Hijacking, given the Complainant’s weak mark and an attempt to misrepresent as to date of use of the mark. Here, it is quite evident that domains <tickets.org.in> and <ttm.org> have been acquired by the Complainant in 2013 and there has been no evidence of use since the domain registration date. That rather proves Bad Faith on the part of the Complainant and hence a finding of Reverse Domain Name Hijacking is necessary.
The RDNH was previously held under INDRP only once in the matter of INDRP/008 – Computer.in, where in a similar situation it was held that “this tribunal is of confirmed opinion that the domain name, trade name and trademark is a weak mark and absent of proof of fame of widespread recognition of the services provided by the Complainant makes this complaint without any cause of action”. It was further concluded “that the present complaint by the Complainant is a blatant attempt by the Complainant to hijack the domain name of the Respondent and in bad faith to harass the Respondent and to abuse the process of law.”
Source: Registry.in
