WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Infiniti Retail Limited v. John Cromwell / Croma Web Services
Case No. D2013-1360
1. The Parties
The Complainant is Infiniti Retail Limited of Mumbai, India, represented by Anand & Anand, India.
The Respondent is John Cromwell /Croma Web Services of Baltimore, Maryland, United States of America, represented by UDRP POLICE DBS, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <croma.com> is registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2013. On July 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2013. The Response was filed with the Center on August 19, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on August 23, 2013. 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.
On September 5, 2013, the Complainant’s Representative sent an email communication to the Center requesting withdrawal of the Complaint to which the Respondent’s Representative objected on the same day. The Complainant’s Representative then sent another email communication to the Center requesting a 10-day suspension of the current proceedings as the Complainant would like to attempt to explore the possibility of settling the dispute with the Respondent. The Respondent’s Representative replied that it would bring the matter to the attention of its client and revert in due course.
On September 6, 2013, the Center acknowledged receipt of these communications from the parties, and brought them to the Panel’s attention. On the same day, on Panel’s instruction, the Center informed the parties of the following:
“The Panel has reviewed the supplemental filings from both parties. The Panel notes that said submissions have been filed at a very late stage of these proceedings, and further notes that there appears to be no settlement reached between the parties at this stage. Noting the Panel’s powers to conduct these proceedings in accordance with paragraphs 10(a) and 17(a) of the UDRP Rules, and in light of the projected decision due date of today September 6, 2013, the parties are hereby informed that the Panel shall proceed to render its decision shortly.”
4. Factual Background
The Complainant has since 2006 operated India’s first national, large format specialist retail chain for consumer electronics and durables, under the trade mark or service mark CROMA. It owns numerous trade mark registrations in India for its CROMA mark including in particular, word mark registration 766819. The Complainant sells its goods/services under the CROMA mark through its website at “www.cromaretail.com”.
The Respondent registered the disputed domain name on October 3, 1996 (Annex 1 to the Response) for use in connection with a business called Croma Web Services which operated from or around February 1997. This website subsequently became inactive around February 2011.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights in India as noted above and in addition that due to the extensive use and advertising of its CROMA mark throughout India and considering that it is the market leader for a retail chain in the area of consumer durables, that it enjoys a very substantial reputation and goodwill sufficient to support common law rights in its mark. The Complainant says that the substantive elements of the disputed domain name are identical to its CROMA mark.
The Complainant submits that it has not authorised the Respondent’s use of the CROMA mark (which it suggests was registered in 2001), that the Respondent’s choice of the CROMA mark was unnecessary, that it provides no bona fide offering of goods or services in relation to the mark, that the sole reason for the Respondent’s use of the disputed domain name was to cause confusion and that as the disputed domain name is inactive there can be no plausible explanation for its use by the Respondent. As a result says the Complainant the Respondent has no rights or legitimate interests in the disputed domain name.
As far as bad faith is concerned the Complainant’s case is essentially that the Respondent has made no legitimate use of the disputed domain name which wholly incorporates the Complainant’s well reputed mark, that the Respondent’s non-use is strongly indicative of bad faith and that the Respondent’s use will only confuse Internet consumers into thinking that there is some association or affiliation with the Complainant.
The Respondent does not challenge the Complainant’s submissions that it owns registered trade mark rights in the CROMA mark or that the disputed domain name is identical to that mark.
The Respondent submits that it registered the disputed domain name on October 3, 1996 for the purposes of providing web services. The Respondent registered the disputed domain name on October 3, 1996 for the purposes of providing web services through a business called Croma Web Services which it says was established in February 1997 as a provider of various web services (in particular for web publishing, consulting, design, scanned images, custom logos, image maps, custom forms and cgi scripting services). The Respondent says that the disputed domain name subsequently resolved to its website through which it did in fact provide a bona fide offering of web related services from 1998 – 2011.
The Respondent submits that its website at the disputed domain name has only been inactive since February 2011 as set out on its website and that in these circumstances inactivity is not sufficient to establish that it has no legitimate interests or rights in the disputed domain name. The Respondent says that its Croma name simply derives from the first three letters of the respective partners’ names, “Messrs Cromwell” and “Masters” which explains its choice of the mark and that in any event there is extensive third party use of this mark on the Internet. It says that at no time has it sought to take advantage of the Complainant or of its mark or reputation and that in any event the Complainant’s reputation appears to be limited to India while the Respondent operates in the United States.
The Respondent asserts that it did not register the Disputed Domain Name in bad faith and that this is borne out by the fact that it registered the Disputed Domain Name in 1996 and that this registration pre-dated the Complainant’s trade mark rights. Further the Respondent says that it had no knowledge of the Complainant’s rights in India and that without such knowledge it cannot have had any intention to trade on the Complainant’s rights or to register or use the disputed domain name in bad faith. The Respondent says that it appears from the Complainant’s evidence that its CROMA brand was only established in 2006, many years after the Respondent’s registration of the disputed domain name and use in trade and therefore the Respondent was the prior user and it cannot possibly be suggested that it registered the disputed domain name in bad faith. On this basis the Respondent alleges that the Complainant should have known that its Complaint could never succeed under the Policy and that the Complaint amounts to a case of reverse domain name hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trade mark rights in the CROMA mark as set out above and that the substantive elements of the disputed domain name are identical to this mark. As a result the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent only registered the disputed domain name to cause confusion, that its choice of the mark was unnecessary and that it has not and does not make a bona fide offering of goods and services under the mark.
According to the publically available WhoIs records the Respondent, based in the United States, registered the disputed domain name in October 1996 and not in 2001 as submitted by the Complainant. Based on the evidence provided by the Respondent, including screenshots, evidence of its business registration in early 1997 for the purposes of providing web services under the name Croma Web Services, its tax registration and initial set-up invoices, the Panel accepts that the Respondent registered the disputed domain name for the bona fide purposes of its web service business and in fact operated this business from its website at the disputed domain name for approximately 13 years. The fact that, as submitted by the Respondent, its business has not operated since 2011 and now resolves to a place keeper page at which the Respondent acknowledges that it is no longer in business, does not detract from the Respondent’s legitimate interest in registering the disputed domain name for bona fide business purposes in the first place and in making what appears to the Panel to have been a perfectly legitimate use of it for many years. The fact that it has not been used except to resolve to a place keeper page for the last couple of years does not necessarily imply that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of this element of the Policy.
The Panel finds, based on the evidence submitted by the parties, that the Respondent registered the disputed domain name for its own bona fide business purposes in the United States approximately ten years before the Complainant commenced its retail operations in India. There is no other evidence before the Panel to suggest that the Respondent’s registration or subsequent use of the disputed domain name is illegitimate or was calculated to confuse Internet users and accordingly the Panel finds that the Respondent has successfully rebutted the Complainant’s case under this element of the Policy and that the Complainant has not made out its case as required under this element of the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Complaint therefore fails under the second element of the Policy.
C. Registered and Used in Bad Faith
As noted above the Panel finds as a fact that the Respondent registered the disputed domain name approximately ten years prior to the Complainant’s commencement of its business in India. Even had the Complainant’s submission been correct that the disputed domain name was registered in 2001, this would still have pre-dated the Complainant’s business start-up and the registration of its marks by many years. As a result the Panel finds it impossible that the Respondent, operating in the United States could have registered the disputed domain name in bad faith where the Complainant’s Indian business and marks did not even exist at the date of registration.
UDRP panels have long accepted that the third element of the Policy has a conjunctive requirement and that both registration and use in bad faith must be found for a claim to succeed under the third element. The Panel finds it difficult to believe that the Complainant, who is represented by expert counsel, was not advised accordingly. In these circumstances the Complaint should never have been made as, even on the most cursory review and even without any substantial investigation of the Respondent’s past use of the disputed domain name, it should have been apparent that the Complaint could never have been successful under the third element, quite apart from the second element of the Policy.
The Panel finds that the Complaint was an unnecessary imposition upon the Respondent and an abuse of the Policy. There is moreover no evidence before the Panel that the Complainant ever previously communicated with the Respondent, whether concerning an alleged infringement of its rights, or with regard to commercial acquisition of the disputed domain name. It appears to the Panel that the Complaint was simply brought in an attempt to obtain a domain name that the Complainant decided after the fact it would like to own for its own business purposes. In these circumstances the Panel has no hesitation in finding that the Complaint amounts to an attempt at reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Date: September 6, 2013