Complainant is Pantaloon Retail India Limited of Mumbai, India, represented by Krishna & Saurastri, India.
Respondent is RareNames, WebReg of Waltham, Massachusetts, United States of America, represented by NameMedia, Inc., United States of America.
The disputed domain name <pantaloons.com> is registered with TierraNet d/b/a DomainDiscover.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On April 16, 2010, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On April 16, 2010, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2010. The Response was filed with the Center on May 12, 2010.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on May 20, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The disputed domain name was registered by Respondent on December 31, 2002.
Complainant is a large retail organization operating in India. It is part of the Future Group and has stores at 138 locations throughout India and employs approximately 30,000 people. In the year 2008/2009 it had a turnover equivalent to approximately 1.27 billion U.S. dollars. Complainant owns several Indian trademark registrations consisting of, or including the word “pantaloon” dating from as early as June 1997. It also owns several domain names incorporating the word “pantaloon”. Complainant claims to have used its trademark PANTALOON continuously and extensively since 1988. Complainant asserts that it has aggressively and extensively promoted and advertised its goods and services under the name and trademark PANTALOON and PANTALOONS through the media and through sponsorship of international events including international cricket matches and the annual Miss India Beauty Pageant. Complainant claims that its trademark PANTALOON is a famous mark.
Respondent operates a business of buying and selling Internet domain names. It claims to own of the order of 80,000 domain names which it offers for sale through its website at “www.buydomains.com”.
The disputed domain name is offered for sale at that website for USD 38,000. At the time of filing of the Complaint, the disputed domain name resolved to a website linking to eBay and other sites, offering pantaloon garments for sale. Respondent asserts that it makes a practice of acquiring and registering domain names that incorporate common and/or generic words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no third party has exclusive rights. Not surprisingly Respondent has been the respondent in many disputes under the Policy. In some of these disputes it has been successful, in others, not. In several cases Respondent has consented to transfer of the domain name, see for example The Law Society v. RareNames WebReg / Rarenames Inc., WIPO Case No. D2009-0720.
Respondent states that it acquired the disputed domain name when in December 2002 it was allowed to lapse by its previous owner. There is no information as to who was that previous owner or whether it had any connection with Complainant.
Complainant contends that the disputed domain name is substantially identical to its well-known trademark and that its reputation in that mark extends not only to India but also internationally. Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, it is not commonly known by that name and has not been licensed or otherwise permitted by Complainant to use Complainant's trademark in a domain name. Complainant submits that “had the Respondent conducted even minimal internet searches before registering the impugned domain name, such searches would have alerted the Respondent to the Complainant's existing name and mark”. Complainant asserts that a “Google” search for “pantaloons” produced over 800,000 hits almost all of which were associated with Complainant. Complainant contends that Respondent has an established pattern of registering domain names that contain marks belonging to other persons purely with the intent of selling the domain names for profit. According to Complainant, Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, but rather is using it to divert traffic to its commercial website thereby creating confusion in the minds of Internet users for commercial gain.
Complainant contends that Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to Complainant or to a competitor of Complainant.
Respondent does not contest that Complainant has rights in the trademark PANTALOON in India, however, its extensive submissions are, briefly put, that:
(a) Complainant's rights did not extend to the United States, where Respondent is located. The majority of the hits from a “Google” search geolocalised to the United States do not relate to Complainant;
(b) when it acquired the disputed domain name in 2002 it did not know, and had no reason to know of Complainant's claim to trademark rights and that its searches at the U.S. Patent and Trademark Office revealed no registration of the trademark PANTALOON by Complainant;
(c) it is in the business of acquiring and registering generic or descriptive domain names and that that business is, and has been held by several UDRP panelists to be, a legitimate offering of goods or services as specified in paragraph 4(c)(i) of the Policy;
(d) its policy is to register only domain names which are descriptive or generic and it has procedures in place to implement the policy;
(e) the word “pantaloons” is no more than a generic English word descriptive of garments of that name, and as such, is available for registration on a “first come, first served” basis;
(f) its offering of the disputed domain name for sale is not targeted at Complainant or a competitor of Complainant;
(g) it had no knowledge of a dispute as to the disputed domain name until it was served a copy of the Complaint on April 22, 2010; and
(h) prior to that date, in addition to offering the disputed domain name for sale, it advertised “pantaloons” on its website at the disputed domain name, and that such goods are not competitive with goods of Complainant.
Complainant has clearly demonstrated rights in the trademarks PANTALOON and PANTALOONS in India. The disputed domain name is identical with Complainant's trademark PANTALOONS and confusingly similar to its trademark PANTALOON with the addition only of the domain name denominator “.com”. The Panel therefore finds that the disputed domain name is identical or confusingly similar with a trademark in which Complainant has rights.
Respondent's claim to rights or legitimate interests in the disputed domain name rests on paragraph 4(c)(i) of the Policy, namely that before it received any notice as to the dispute it used the disputed domain name in connection with a bona fide offering of goods or services. Respondent's claim to the benefit of that provision rests first on its alleged use in offering pantaloons for sale at the website and secondly its contention that its acquisition of the lapsed registration of the disputed domain name and offering of it for sale constituted a legitimate and bona fide offering of a service.
As to the first proposition, the offering of pantaloons for sale at the website, appears to the Panel to be contrived and there may well be grounds for questioning its validity. Clearly, from the evidence provided, Respondent is not itself offering pantaloons for sale, it is merely providing links to eBay and other sites where such offers are made. However, in the light of the Panel's conclusions in relation to Respondent's second proposition, it is unnecessary for the Panel to decide that question.
There is a substantial consensus among panelists that the acquisition and offering for sale of domain names and/or using them to provide links to other sites may well (provided it is not directed at trademark misuse in breach of the Policy) be a legitimate business, a business engaged in not only by Respondent but by other operators who acquire and “warehouse” domain names which they think others might consider valuable. Whether that consensus is justified may be a matter for debate, but in the opinion of the Panel there is a strong body of precedent which, though not binding, is strongly persuasive1.
The question whether the acquisition and use of the disputed domain name for that purpose constitutes a bona fide offering for sale is intimately linked with the question of whether or not the acquisition and use is in good faith. In this respect, the general approach among panelists appears to be to divide the cases into two categories; those in which the concerned trademark is fanciful or non-generic, and those in which the relevant trademark comprises a common generic word, particularly where the word is a word germane to the goods or services in respect of which the disputed domain name is used.
For cases in the second category, of which this is one, the question whether Respondent's use constitutes a bona fide offering often turns on whether the use is in good faith and that in turn depends on an analysis of the circumstances of the adaption and use of the disputed domain name. In Zerospam Security Inc. v. Internet Retail Billing Inc., Host Master, WIPO Case No. D2009-1276, panelist Andrew Christie noted that previous panels have held that “reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for the purpose of paragraph 4(c) of the Policy, but not in all instances” and that such practices are most likely to be deemed legitimate when:
(i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links;
(ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
(iii) the domain name in question is a “dictionary word” or a generic or descriptive phrase;
(iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
(v) there is no evidence that the respondent had actual knowledge of the complainant's mark.
In this case, criteria (i) and (iii) are clearly satisfied and so too, in the Panel's view, is criterion (v). As to criterion (iv), the Panel is satisfied that Complainant's mark is famous and distinctive in India, however there is no evidence that it is well-known outside that country and in particular, in the United States, where Respondent is located.2 There is no evidence that Complainant's Pantaloon trademark is registered outside India or that it is known or used outside India. Complainant's parent, the Future Group, appears to have operated internationally but there is no evidence that it used or promoted the trademark Pantaloon in such operations. Respondent has attempted to show that it satisfies criteria (ii) and has detailed steps that it says it carries out for that purpose. It is a familiar problem in cases such as this that neither party is able to establish what occurred and what the circumstances were several years earlier. Respondent's submissions and supporting declaration speak in the present tense and do not throw any light on whether its stated policy was in existence in 2002 or whether it was always carried out. Respondent's evidence as to whether those steps were carried out in this case is lacking. Respondent's record in other cases would suggest that its stated policy is not always carried out, or is not always successful – see for example, Imperial Chemical Industries PLC v. Rare Names, WIPO Case No. D2006-0124.
Irrespective of whether Respondent's checking policy was carried out in this case, the matter to be assessed in this Panel's view is whether, in the face of what was known or ought reasonably to have been known to Respondent from general knowledge, trademark searches and other searches such as the Google searches to which both parties refer, Respondent's appropriation and subsequent use of the disputed domain name was bona fide. Searches in Respondent's home jurisdiction would not presumably have revealed Respondent's trademarks. Internet searches would probably have disclosed Complainant's existence, its trademark and the activities which it conducted in India, but they would also have disclosed many other uses of the word “pantaloons” as a descriptive word and probably also as a word used transferatively to describe a comic character, a theatrical troupe and as a word appearing as a part of, or extension to, other domain names not connected with Complainant. It is also significant that the disputed domain name was acquired after it was allowed to lapse by a previous owner not apparently connected with Complainant.
In these proceedings the burden of persuasion is initially with Complianant. Complianant has made a prima facie showing and shifted the burden to Respondent. On balance, the Panel concludes that Respondent has discharged that burden to an extent sufficient to establish that it has, within the parameters established by the Policy and as applied by panelists in previous cases, legitimate interests in the disputed domain name. This is not a case where the domain name in issue is so obviously and exclusively referable to the Complainant, that no other conclusion is possible, see Boutique Tristan & Iseut Inc. v. B & B, WIPO Case No. D2007-1816. The Panel therefore finds that Complainant has failed on balance to establish that Respondent has no rights or legitimate interests in the disputed domain name.
In view of the Panel's finding under paragraph 6B above, it is unnecessary to further consider the questions raised by this paragraph.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Dated: June 21, 2010
1 The act of offering a domain name for sale may be a legitimate business but it is not use of that domain name “in connection with” the offering of it for sale. It is treating the domain name as a commodity of commerce. The use which is relevant for the purpose of paragraph 4(c)(i) is use to link to the site where the domain name or goods or services are for sale.
2 The Panel is mindful that, in a global marketplace, such as that for domain names, the geographic locus of trademark fame may be less relevant, especially in the context of ready searching on the Internet. However, the fame of the Complainant's mark is not in this Panel's assessment so great as to have been readily obvious from a casual Internet search conducted from anywhere outside of India. It is not as if the Respondent is, for example, claiming a lack of awareness of a globally ubiquitous mark such as VOLVO, see Volvo Trademark Holding AB v. Zhang Xinyu, WIPO Case No. D2008-0261.