WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Sidhartha Mallya v. Mr. Puneet Agarwal
Case No. D2014-1262
1. The Parties
The Complainant is Mr. Sidhartha Mallya of Mumbai, India, represented by Prakash & Associates, India.
The Respondent is Mr. Puneet Agarwal of Alwar, Rajasthan, India, represented by Ankur Raheja, India.
2. The Domain Name and Registrar
The disputed domain name <sidmallya.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 23, 2014. On July 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The same day, 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 Complainant filed an amended Complaint on July 25, 2014. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 14, 2014.
The Center verified that the Complaint together with the amended Complaint and the amendment to 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 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2014. Upon a request from the Respondent for an extension of the due date for filing a Response, the due date for Response was extended to September 12, 2014. Several informal communications were filed by the Respondent between the time that the Complaint was first filed and the Response due date. A formal Response was filed with the Center on September 12, 2014.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 24, 2014. 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 Complainant made a representation seeking to file a supplemental submission as a rejoinder to the Respondent's Response. On September 28 2014 the Complainant send an email to the Center as a supplemental submission. The Panel declined to entertain any supplemental filings by the parties, as the Rules do not expressly allow supplemental filings unless expressly called for by the Panel or if in the Panel's view there is some exceptional circumstance or grounds to allow the supplemental filings. The Panel found there were no exceptional circumstances in the present instance to consider the request for supplemental filings.
Due to exceptional circumstances, it has been necessary for the Panel to extend the decision due date in this case.
4. Factual Background
The Complainant is the son of an Indian businessman Dr. Vijay Mallay, Chairman of the United Breweries Group ("UB Group") of companies. The UB Group is known primarily for its liquor and brewing business with diversified interests in other areas including aviation and ownership of premier sports teams. Some of the companies associated with the group are United Spirits Limited and United Breweries Limited. Dr. Mallya is the Managing Director of the Formula One Team "Sahara Force India". The group's ownership of other sport teams includes the Indian Premier League cricket team, "The Royal Challengers of Bangalore" and the football team Mohan Bagan Athletic Club of Kolkata.
The Respondent registered the disputed domain name on July 2, 2012 and has not used it for any specific purpose. There is no content on the website linked to the disputed domain name which is parked on the registrar's (Go Daddy) website. The Respondent in his Response dated September 12, 2014 has not provided information regarding his background.
5. Parties' Contentions
The Complainant seeks the transfer of the disputed domain name on the ground that the disputed domain name reflects the shortened form of his name. He claims to have unregistered or common law service mark rights in his name as a TV host, a model, a columnist and as an entrepreneur. The Complainant also describes himself as a fitness icon, youth icon, fashion icon and an opinion leader. The list of his achievements include: Member Board of Directors of the UB Group, Director Royal Challengers Sports Private Limited, Chairman Mohan Bagan Athletic Club, host of the television show "Hunt for the Kingfisher Calendar Girls" and host of cricket show "No Boundaries" broadcast on You Tube (with 349,467 lifetime hits), columnist for a sports website "www.espncricinfo.com" and for the lifestyle magazine GQ, awarded GQ man of the year award, voted "The Most Stylish Male of the Year" by Cosmopolitan Magazine, "Sexiest Bachelor of the Year" after worldwide voting on the channel "Love CBS", voted among "50 Best Dressed Men in India" for three years in a row, invited to participate on the prime time television show "India's most Desirable" , second most searched person in the field of business on Google in 2012 at the age of twenty three, imparted training to students of a premier business school in India. The Complainant claims prior use of the abbreviated version of his name on social media sites including Twitter where he has 336,849 followers. He claims he is a celebrity of sorts since 2006 and there is goodwill associated with his name.
The Complainant cites the case of Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Arthur Golden v. Galileo Asesores S.L., WIPO Case No. D2006-1215; Dr Michael Crichton v Alberta Hot Rods, WIPO Case No. D2002-0872; and argues that the name "Sid Mallaya" is distinctive of a range of services. He further asserts that the Policy covers registered and unregistered marks and the Respondent's registration of the disputed domain name is identical to his name and is bound lead to confusion as to its source, origin and affiliation. The Complainant states he is the owner of a number of domain names reflecting his name "Siddhartha Mallya" and that he has filed several trademark applications for his trademark/name that are pending. He states that the Respondent on being contacted by the Complainant for the transfer of the domain name has demanded a sum of USD 2,000,000. The Complainant states that the Respondent has made several domain name registrations of prominent persons such as Arnab Goswami and Cyrus Mistry indicating a pattern of illegal trade and unjust enrichment to make illegal gains.
The Complainant states that the disputed domain name is not used by the Respondent for any legitimate purpose but is merely parked and no rights exist in passive holding of such a domain name. He further states that there is no connection or relationship between the Complainant and the Respondent. Given the non-generic nature of the Complainant's name and fame associated with it, the Complainant argues that it is not possible to conceive of any legitimate use that the Respondent could put it to.
The Complainant asserts that bad faith registration and use of the disputed domain name is evident from the domain name being parked at the registrar's website with no real content except for sponsored links. It was registered to prevent the Complainant from reflecting his mark in a corresponding domain name in the popular ".com" generic Top-Level-Domain ("gTLD"). The Complainant argues the Respondent has demonstrated a pattern of registration of domain names of other famous personalities like that of Complainant's father Vijay Mallya, Arnab Goswami and Cyrus Mistry which proves he is a cybersquatter. The Complainant alleges that he has used the short form of his name Sid Mallya for the past decade and is known in the media by this name and has also registered himself with the Associated Actors & Guild Artist of America in 2013 as Sid Mallya.
The Respondent states the Complainant has no trademark rights in his official name Siddhartha Vijay Mallya or any abbreviation of it. The Respondent argues that media reports show the Complainant has only recently adopted the short form of his name for his future acting career and for better acceptance by international audiences. The Respondent cites the WIPO Consensus view, as stated at paragraph 1.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), that personal names are not specifically protected under the Policy unless a complainant gives sufficient proof that the unregistered trademark has become a distinct identifier of goods or services offered under that name. The Respondent analyses the credentials of the Complainant under this premise and argues that the Complainant is named director in his father's companies and hosts television shows that are sponsored by his family business. "Hunt for Kingfisher Calendar Girls" and "No Boundaries" are mere home productions and not related to any goods and services. No evidence of the Complainant's work as a columnist or his titles of "Best Dress Man" have been filed states the Respondent. Further, "Google Trends 2012" does not contain the Complainant's name as being on top of any list, the annexes are unreadable and intentionally vague to mislead the reader. The Respondent states the evidence showing media coverage is mostly from a privately circulated magazine called KWAN and quotes from an article in Business Standard that shows the Complainant has not commercially endorsed any goods or services: "The same year, he was signed on by celebrity management firm KWAN.. in the hope that he could become the face of some luxury brands, though that seems to have come to naught."
The Respondent cites the cases of Phillippe Pierre Dauman v. Dinner Business WIPO Case No. D2013-1255, Vanisha Mittal v. email@example.com, WIPO Case No. D2010-0810 and Aanayashree Birla v. Ali Madencioglu, WIPO Case No. D2013-1123, and argues that names of children of rich famous businessmen need to be used in trade and commerce as an identifier of goods or services to be considered unregistered trademark rights under the Policy. The Respondent argues that the cases relied on by the Complainant, pertaining to Julia Fiona Roberts, Rita Rudner and Jeanette Winterson are not comparable to the present case as these personal names belong to renowned personalities in their own right and the Complainant has not rendered any service that would qualify his name to be a service mark. The Respondent further argues that the Complainant is not prevented from reflecting his name in the domain name <siddharthavijaymallya.com> which is still available. The Respondent argues that there are other individuals and entities that use the names Sid or Sid Mallaya and has filed evidence of others known by the same names. The Respondent further states the Complainant's father Vijay Mallya is famous for his achievements and for loan default.
The Respondent states the Complainant has provided false evidence of his registered trademark as he has provided proof of trademark application for NO BOUNDARIES, S&M PRODUCTION, RAGING BULLS PRODUCTION, as none of these marks resemble the disputed domain name, it is misleading. The Respondent further argues that the dates of the Complainant's social media accounts have been concealed and refers to a recent newspaper report dated February 2014 that states "Sid Mallya Gets on the Facebook Wagon" and argues the Twitter handle has been changed to reflect the name Sid Mallya which was previously in the name Siddhartha Mallaya. The Respondent questions the authenticity of the TAM reports filed by the Complainant as evidence to show the popularity of the Kingfisher Television program, as it is not issued by any authority on any letterhead. The likes, views and followers on social media sites can be purchased, argues the Respondent, and search results on Google for Sid Mallya show only recent links of 2014 that has been pushed by their social media team. The Respondent denies that the Complainant can claim celebrity status and argues that the Complainant's fame is due to his association and closeness with the brand ambassador of the cricket team, actress Deepika Padukone, that his name has appeared in the news and media for positive and negative reasons. The Respondent argues that mere popularity on social media sites would not give the Complainant rights in the disputed domain name and no trademarks have been filed in the name of Sid Mallya.
The Respondent denies engaging in a pattern of registering domain names of famous personalities. He states the list of domain names filed by the Complainant shows fifty names whereas he owns only five of the fifty names on that list. The additional domain names on that list are an attempt to malign the Respondent. The domain name <cyrusmistry.biz> is not held by the Respondent and is still available. The Respondent states that the Complainant had also included names of unregistered domain names that were later withdrawn from the Complaint. He admits registering the domain name <arnabgoswami.com> due to his admiration for the news anchor that he wanted to meet him in person and hand over the domain name to him. The Respondent states the reason for demanding a very high price of two million dollars for the disputed domain was to stave off the Complainant's bid to buy the domain name, as the Respondent was not interested in selling it.
The Respondent states the disputed domain name was never put to use due to the threats received from the Complainant and that he acquired the disputed domain name <sidmallya.com> as it represents an abbreviated form of the key words of his family business "Sintered Dolomite Minerals and Alloys, Alwar". The Respondent further adds that due to the family's religious sentiments, the name "sidmallya" was also derived from Lord Ganesh's name "Siddhivinayaka" and "allya" rhymed with "Morya" and he claims the disputed domain name was not registered based on any rights of the Complainant's mark.
The Respondent argues that newspaper reports show the Complainant started using the abbreviated form of his name "Sid Mallya" only from 2013, whereas the disputed domain name was registered in 2012. He argues that if the trademark did not exist at the time of registration of the disputed domain name, no bad faith can be found. The Respondent states that the document of registration with a US organization relied on by the Complainant have not been attached and paragraphs eleven to seventeen are not numbered. The question of replying the Complainant's legal notice does not arise as the disputed domain name was registered for a legal purpose. The Respondent denies that the webpage linked to the disputed domain name had at any time advertised it for sale. Further, no evidence has been provided that the Complainant is entitled to rights in the abbreviated version of his name as the three letters SID can be a short form for several other Indian names such as the "Siddhu", "Siddraj" or "Siddesh". The Respondent claims the Complainant has made threatening calls and requests the Complaint be denied and for a finding of Reverse Domain name Hijacking under paragraph 15(e) of the Rules.
6. Discussion and Findings
The Complainant is required to establish three requirements under paragraph 4(a) of the Policy in order to obtain the remedy of transfer of the disputed domain name. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent lacks rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
It is relevant to note here that the guidelines given in the WIPO Final Report on the Second Domain Name Process (September 3, 2001) has specified the degree to which personal names ought to be protected under the Policy paragraph 4(a)(i). It is clearly indicated in the report, that the Policy should be limited to personal names that have been commercially exploited. Second WIPO Report, paragraph 199 states, "Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves the UDRP to protect their personal names against parasitic registrations".
A. Identical or Confusingly Similar
The first requirement of paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
The facts of this case have raised some interesting questions regarding rights in a personal name and availing remedy under the Policy on the basis of such rights. Personal names are considered inherently non-distinctive and unless it has been established that the name has acquired distinctiveness and secondary meaning in commerce, panels have invariably declined to transfer a domain name to a complainant claiming rights in his or her personal name. However, complainants have successfully obtained transfer of domain names on the basis of having trademark registrations of their personal names. See for instance Harpo Inc. and Oprah's Farm LLC. v. Robert Mc Daniel , WIPO Case No. D2013-0585; pertaining to the domain names <oprahsfarm.com> and <oprahsfarm.net> where Oprah is the personal name of a famous television anchor on a television show whose title reflects her name, and based on the personal fame of Ms. Oprah Winfrey, there are valid trademark registrations for the OPRAH mark. See also Mr. Peter Frits Saerang and PT Peter Frits Saerang v. Imedia Biz Pty Ltd., WIPO Case No. D2007-0474; where the complainant has registered trademark rights in his personal name, Peter F. Saerang, for hairdressing services.
Personal names that are famous and have acquired secondary meaning in commerce are capable of being protected as unregistered trademarks. See Jay Leno v. Garrison Hintz, WIPO Case No. D2009-0569; where the panel held that "To be entitled to protection under the Policy, however, a personal name must function as a trademark, and for common law trademark rights to exist, the Complainant's personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source. […] On the basis of the highly probative evidence presented by the Complainant in this case, the Panel concludes that the Complainant's name has come to be recognized by the public as identifying and distinguishing the Complainant's goods and services from those of others." A celebrity having established rights resulting through trademark registration or common law usage is entitled to exclusive control and exploitation of his or her mark in connection with the goods and services with which that celebrity is associated.
The Complainant in the present case has claimed unregistered or common law service mark rights in the abbreviated form of his name Sid Mallya1. The evidence filed by the Complainant in this regard is comprised of about one hundred and fifty pages, with documents pertaining to companies where the Complainant is a director, copies of full page photographs of the Complainant published in magazines, articles in magazines and newspapers, news reports, copies of cover pages of magazines that feature the Complainant, newspaper and other media reports referring to the Complainant as Siddhartha Mallya or Sid Mallya.
Based on all the evidence presented, the Panel has no hesitation in finding the Complainant is undoubtedly a famous figure. However, in cases such as the present one, mere celebrity as a business personality is regarded as insufficient to obtain the remedy under the Policy. The analysis of whether the Complainant has used his name in a manner that shows or establishes trademark or service mark rights is paramount. That is to say, that the name has become a distinct identifier of any particular goods and services and the name has been shown to be commercially exploited. This question has been dealt with in several previous cases. If a personal name has been found to be the alter ego of a company or the main driving force behind a company, such as in Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068; the complainant is likely to have established common law trademark rights in his or her name. See also Dr Kumarmangalam Birla v. William Well domains, WIPO Case No. D2004-0772; concerning the domain name <kumaramangalambirla.com>, in which the complainant was found to have rights in his name as there was evidence of use of the name as a business identifier and his personal name was used to distinguish the complainant's business. In such cases, unregistered trademark rights have been found in respect of a complainant's personal name. In Steven Rattner v. Buy This Domain Name (John Pepin), WIPO Case No. D2000-0402; the complainant was found to have unregistered or common law trademark rights in his name for providing investment banking and corporate advisory services under his name and therefore ought to have protection under the Policy.
On the other hand, in cases such as Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540 (which incidentally discusses the difference between personality rights v. trademark rights); Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255; Ted Turner v. Mazen Fahim WIPO Case No. D2002-0251; and Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718; it was held that mere fame of being a well-known business personality is not sufficient to find the name had been used as a marketable commodity. Unless there is evidence of use of the name as a trademark or service mark in commerce, the remedy under the Policy cannot be availed. A complaint may also fail on the basis that the alleged trademark is inherently non-distinctive. See Gordon Sumner p/a/k/ Sting v. Michael Urvan, WIPO Case No. D2000-0596; in which the well-known English musician was denied transfer of a domain name reflecting his stage name "Sting" on the basis that "sting" is a common English word.
The Respondent has referred to some cases involving the personal names of children of famous businessmen Vanisha Mittal, Ananyashree Birla v. Ali Madencioglu, WIPO Case No. D2013-1123 and Neerja Kumar Mangalam Birla v. Ali Madencioglu, WIPO Case No. D2013-1124. The Panel finds these cases can be distinguished from the facts in the present case. The complainants in the cases cited by the Respondent did not show by way evidence that they had contributed to their family business or otherwise had obtained fame for excellence in any other area. Does the fact that a complainant comes from a famous business family act as an immediate disqualification to obtain remedy under the Policy? In light of other UDRP Panel decisions, this Panel is of the view that children of business families are not necessarily denied remedy under the Policy, provided trademark rights in their names have been established. See for instance Paris Hilton v.Tuvill Consultant's, WIPO Case No. D2012-0965. In Dr Kumaramangalam Birla v. William Well domains, supra (Dr. Kumaramangalam gained fame by working for his family business and it was found that his personal name was protected as an unregistered mark under the Policy).
The Complainant has filed evidence that shows he has obtained fame as a fitness icon, youth icon and as a fashion icon. He has appeared on the cover of several lifestyle magazines like GQ, People, Men's Health, Hello and has been awarded "GQ Man of the Year Award", voted among "Best Dressed Men in India" and invited to participate on the prime time television show "India's most Desirable". These awards are very laudable achievements by the Complainant. While these achievements refer to the Complainant's dynamic personality, would such achievements help the Complainant establish rights to obtain relief under the Policy? As previously noted, such achievements and fame, in and of itself, would not be sufficient to get relief under the Policy unless it is found that the name has been used as a trademark or service mark in commerce and acquired secondary meaning.
Let us now turn to the factors that a panel may typically consider to determine that a famous person's name has acquired secondary meaning in a trademark sense. The three aspects that a panel may assess are fame, length of use, and instant recall. If the Panel is satisfied that the evidence filed demonstrates the Complainant's fame, the next assessment would be the length of time the personal name has been used in commerce and whether it has acquired secondary meaning due to such use. If a substantial section of the public understands the designation, when used in connection with services or a business, not merely as a personal name, but as referring to a particular source, the Complainant would be found to have established unregistered or common law trademark rights in his personal name. Under the Policy, unregistered or common law rights may exist in personal names when that name is used as an indication of the source of goods and services provided in trade or commerce and as a result of such use the name has become distinctive of that source. See Nicole Richie v. Sonny Ahuja, WIPO Case No. D2012-0500 in respect of the domain name <nicholerichiefragrance.com>, Nichole Richie, an actor and spokesperson, well known in entertainment and fashion circles, was found to have strong unregistered or common law trademark rights in her name for her performance services. The personal name ought to be used as a trademark must be used in a manner that is perceived by the consuming public as identifying the source of goods and or services. Trademark Law and the Policy gives protection to names of celebrities even if the celebrity is selling only himself or herself and not goods and services.
The Panel in Chung, Mong Koo and Hyundai Motor Company, supra has indicated some useful guidelines for assessing personal names of business people, these are: (1) extent to which the business community identifies the individual with the company; (2) extent to which the media and the public see the individual as the alter ego of the company or the driving force behind the company; (3) extent of personal ownership of company by the individual; (4) degree of personal control that the individual exercises over the enterprise; (5) extent to which the individual is identified with any major achievements of the enterprise; and, (6) whether the individual has demonstrable interests in protecting his or her name for commercial interests.
On the question whether the Complainant in the present case can claim rights in his personal name due to fame associated either directly or indirectly with his business, or as a performer for being a host of a television show or for his interest in sport and entertainment, regarding the Complainant's prominence in the area of sport, the use of one's name in promoting sport is almost always to some degree commercial. See Allen Stanford v. Krishna Mohunlal, WIPO Case No. D2008-1188; in which the complainant used his name in promoting 20/20 cricket and was held to have to have unregistered or common law rights in his name under the Policy. The Panel finds the Complainant has presented sufficient evidence of use of his personal name in its abbreviated form as a distinct identifier of services in connection with his business as the host of a sports talk show "No Boundaries". He has used his name in a manner that is perceived by the consuming public as identifying the source of goods and or services and has furnished sufficient evidence of such use before this Panel. The Complainant is found to have established in these proceedings, that he has common law trademark rights in the abbreviated form of his name and the disputed domain name is identical to a mark in which he has rights.
The Panel finds, based on all that has been discussed, that the Complainant has successfully established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant show that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant may only be required to make a prima facie case in this regard, provided that it is not rebutted by the Respondent.
The Respondent has claimed that he has valid and legitimate reasons for registering the disputed domain name. The first explanation given by the Respondent is that the disputed domain name was registered to reflect an abbreviated form of some of the products dealt with by businesses owned by family members of the Respondent. The names of the family business being "Hi – Tech Minerals and Chemicals" and "Vikas Minerals" which are apparently in the name of the Respondent's mother and brother respectively. The business is said to deal in trading of dolomite, sintered dolomite among other minerals and supplies. The disputed domain name is alleged to be an abbreviation for "Sintered Dolomite Minerals and Alloys, Alwar", according to the Respondent.
The second explanation the Respondent has given is the disputed domain name is derived from Lord Ganesh's name "Siddhivinayaka" and "allya" rhymed with Morya due to the family's religious leanings. The Panel is not convinced by either explanation provided by the Respondent; the contentions relating to the abbreviations lack credibility for the reason the last part of the alleged abbreviations do not match with "Mallya". Furthermore, it is highly unlikely that a person searching for the Respondent's family business would search for it under the name or term "Sid Mallya". Similarly, people searching for "Siddhi Vinayaka" are unlikely to search for "Sid Mallya". While the Panel is willing to accept that the Respondent may have a family business dealing in minerals operating under the names of "Hi– Tech Minerals and Chemicals" and "Vikas Minerals", it is a far cry to say that the disputed domain name has been registered to reflect the name of the business or even a convincing abbreviation of the products allegedly traded under the said businesses.
The Respondent has provided no evidence that he is commonly known by the disputed domain name or proof of any business that he is associated with a name that is similar to the disputed domain name. There is no evidence on record that shows the Respondent has made demonstrable preparations to use the disputed domain name with a bona fide offering of goods and services.
In the circumstances, the Panel finds the Respondent lacks rights or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name has been registered in bad faith and is being used in bad faith.
The Panel finds there is sufficient circumstantial evidence that points to the Respondent's bad faith registration of the disputed domain name. Given the fact that the Respondent has not provided convincing justification for selection of the disputed domain name, it is more likely than not, that the Respondent has knowingly registered the disputed domain name due to the reputation and fame associated with the Complainant's name. The Respondent who resides in India is probably aware of the fame associated with the Complainant's name and has registered the disputed domain name as it reflects the Complainant's name, who is a famous personality.
Given the fame associated with the Complainant's mark and other circumstances in the case, the Panel cannot overlook the fact that there is passive holding of the disputed domain name and evidence of the Respondent quoting a price to the Complainant that far exceeds the direct out-of-pocket costs directly related to the dispute domain name. The Panel finds it difficult to reconcile the explanations provided by the Respondent that he has quoted the sum of USD 2,000,000 to stave off the Complainant from buying the disputed domain name, and yet has registered the name of the famous news anchor, Arnab Goswami, and is ready and willing to transfer that domain name to the concerned person in exchange for meeting him in person. In this Panel's view, it is unlikely that the Respondent was not seeking to make some form of gain from registering the disputed domain name that is similar to the Complainant's name.
The Panel finds no substance in the Respondent's arguments that the Complainant started using the abbreviated form of his name Sid Mallya only from 2013 and there is no bad faith on his part in registering the domain name as the disputed domain name was registered in 2012. The Panel finds there is sufficient evidence that shows the Complainant has used the abbreviated form of his name Sid Mallya for hosting the cricket talk show "No Boundaries by Sid Mallya" since the first episode of the show on April 9, 2012. Furthermore the media and published articles and newspaper reports have consistently referred to the Complainant by his shortened name prior to the registration of the disputed domain name in July 2012. (Magazine GQ September 2011 Issue, Cover picture along with the name Sid Mallaya, Financial Express, May 19, 2012 issue, several news articles prior to July 2012 refer to Complainant as Sid Mallya ).
It is well established that short form or abbreviation of a mark may be created by the public and the media, the abbreviated mark may later be adopted by the owner of the trademark, see Research In Motion Limited v. Privacy Protect.org / berry store, henry santosa, WIPO Case No. D2009-0469 "Panel accepts that an abbreviated or nickname even if publicly created, may in certain circumstances have trademark protection" (where panel recognized the shortened form BERRY for the BLACKBERRY mark) and Research In Motion Limited v. Fred Potter / Berrystore / Mill River Labs, WIPO Case No. D2009-0370 (where it was successfully argued by the complainant that a publicly recognized nickname is entitled to independent legal protection as a mark, giving the examples of COKE for Coca Cola, BUD for BUDWISER beer, BEETLE for a style of Volkswagen automobile, HOG for a large HARLEY- DAVIDSON motorcycle, MET for Metropolitan Opera, PAN-AM for Pan American Airways, and PHILLIES for PHILADELPHIA cigars). Trademark rights in an abbreviated form, in relation to unregistered or common law rights that relate to the personal name of a performer are also recognized. See Cedric Kyles v. Domains by Proxy, Inc / Asia Ventures, Inc., WIPO Case No. D2006-0046 in relation to the domain name <cedrictheentertainer.com>.
The Panel finds for the reasons discussed above that the disputed domain name has been registered in bad faith and is being used in bad faith.
D. Reverse Domain Name Hijacking
The remedy of Reverse Domain Name Hijacking is available to a registrant of a domain name if it is found that a complaint has been filed in bad faith to divest the registrant of his domain name. Under the facts and circumstances discussed in the present case, no such bad faith on the part of the Complainant has been established.
Further, it is found that the Respondent has not established rights or legitimate interests in the disputed domain name, and has registered and used the disputed domain name in bad faith. Under these circumstances, the question of Reverse Domain Name Hijacking does not arise. The Panel finds the Respondent has made no case of Reverse Domain Name Hijacking and declines the Respondent's request for such a finding.
The Panel finds:
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sidmallya.com> be transferred to the Complainant.
Date: October 20, 2014
1 The Panel notes that no trademarks applications are filed for the names "Sid Mallya" or "Siddhartha Mallya". The Panel does not condone misleading statements made by the Complainant's counsel stating that "The Complainant has filed several applications for registration of his trademark/names and their variants". The corresponding exhibit shows a list contains trademarks application for the marks NO BOUNDARIES, S&M PRODUCTIONS, RAGING BULL PRODUCTIONS. RAGING BULL, RAGING BULL ENTERTAINMENT and XTREME XHILARATING EXPERIENCE.