WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veena Kumaravel v. Daegu Law Auction
Case No. D2019-2508
1. The Parties
Complainant is Veena Kumaravel, India, represented by DePenning & DePenning, India.
Respondent is Daegu Law Auction, Republic of Korea, represented by CyLaw Solutions, India.
2. The Domain Name and Registrar
The disputed domain name <naturals.com> (the “Domain Name”) is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On October 24, 2019, the Center notified the Parties in both English and Korean that the language of the registration agreement for the Domain Name is Korean. On October 25, 2019, Complainant requested for English to be the language of the proceeding. On October 29, 2019, Respondent consented to English as the language of the proceeding.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2019. The Response was filed with the Center on November 25, 2019.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 10, 2019. 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.
4. Factual Background
Complainant is a beauty salon chain with over 650 outlets in India, launched (according to Complainant) in 1991. Services include a unisex salon, the Naturals lounge (premium salon), the Naturals W (women salon), and Page 3 (luxury salon). Complainant has a training academy at its beauty salons called the Naturals Training Academy, to educate individuals in hair and beauty care. The Academy also equips students with technical skills, communication techniques, and client management skills. Complainant’s business model is focused on women entrepreneurship and it has 600 women franchise partners, providing jobs for more than 15,000 trained women. Complainant has expanded its footprint in overseas markets, such as Singapore and Sri Lanka.
In 2017, Complainant’s Naturals Training Academy partnered with Dream Wellness Institute, a division of CADD Centre Training Service Pvt Ltd, to expand its professional training courses on beauty, hair and makeup. The CADD Centre runs a network of customer-aided design training centers in 24 countries and this partnership facilitates Complainant’s use of technology to innovate ways to expand its presence in other countries.
Complainant states it has a customer base of over 3,000,000 customers from all age groups and diverse social backgrounds. Complainant has launched several beauty care products under the trademark NATURALS, which are available in Complainant’s outlets.
Complainant states it commenced using the NATURALS mark in 1991. However, since Complainant, as a policy, does not archive documents for more than 5 years, it is unable to produce documents dating back to the 1990s.
Complainant relies on the NATURALS trademark, claiming statutory and common law rights. Complainant refers to the following Indian trademark registration and application, which claim first use commencing in 1999:
Registration No. 1414842
(registered on July 29, 2008)
Services provided by beauty salons, cosmetic research, dress designing, fashion information, hair implantation, hairdressing salon, health manicuring, massage, physiotherapy, physical therapy included in class 42
Application No. 3795334
April 3, 2018; opposition pending)
Cosmetics and nail polish
Complainant states it has advertised its NATURALS mark through mass media, including print and electronic media, and through participation in the fairs and exhibitions. The brand NATURALS is endorsed by several well-known personalities in the field of entertainment and fashion. Use of the keyword NATURALS in search engines produces webpages of Complainant among the leading links. In April 2019, Complainant’s Naturals Salon & Spa entered the Guinness Book of World Records for having 386 models perform in a single show.
Respondent is Daegu Law Auction, whose owner name is Mr. Deock-Ho Kang. Respondent has provided a business registration certificate to show this relationship. Respondent states that any reference to Respondent includes Deock-Ho Kang.
The Domain Name was registered on September 5, 2001 and currently resolves to a page saying it is suspended due to non-payment of the DNS fees.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states its NATURALS brand has an excellent reputation and patronage not only from its customers, but also in the beauty and fashion industry, and for the role played by Complainant in job creation. Complainant states that in view of its widespread use with the general public, the NATURALS mark has garnered secondary meaning in the market, which is exclusively associated with Complainant. Moreover, Complainant states that the NATURALS mark is considered well-known in India and neighboring jurisdictions. The brand NATURALS expressed on particular products and services brings across the reputation and goodwill associated with the quality of products manufactured, marketed and serviced by Complainant.
Complainant claims that the Domain Name is identical to a trademark in which it has rights. The Domain Name incorporates Complainant’s well-established trademark NATURALS in its entirety.
(ii) Rights or legitimate interests
Complainant submits that Respondent is trying to take advantage of the goodwill and reputation associated with its NATURALS trademark, although Respondent has no connection with Complainant. Complainant has not licensed or otherwise permitted Respondent to register the NATURALS mark, nor has Complainant permitted Respondent to use any domain name incorporating the mark.
Complainant states that the Domain Name incorporates Complainant’s NATURALS mark in its entirety, and contends such use of the Domain Name is considered evidence of bad faith registration and use under the Policy. The Domain Name will give unsuspecting visitors the impression that it has been authorized by Complainant.
(iii) Registered and used in bad faith
Complainant claims that the Domain Name was registered and is being used in bad faith.
Complainant states that an innocent consumer is bound to be misled by the Domain Name registered by Respondent. Complainant contends that, in view of the facts and circumstances in this case, registration of the Domain Name without seeking prior concurrence, approval or permission from Complainant amounts to passing off by Respondent. Complainant asserts that the intention of Respondent appears to be to commit fraud and mislead consumers by unfair and dishonest means.
Complainant states that by virtue of the widespread use and reputation of the NATURALS trademark, members of the public and the trade are bound to associate the Domain Name with Complainant and would get a wrong impression that Respondent is associated with Complainant. This will result in confusion in the minds of the public and the trade about the Domain Name’s source, sponsorship, affiliation or endorsement.
Complainant asserts that it is undoubtedly Respondent’s motive to register the Domain Name comprised of a popular trademark to clandestinely negotiate for transfer of the same for consideration. Complainant claims Respondent exemplifies a habitual cybersquatter engaged in a pattern and practice of registering domain names in bad faith for the purpose of monetizing on such registrations. Complainant states that it approached Respondent in good faith through the Sedo broker service to purchase the Domain Name for reasonable consideration. In response, Complainant was requested to pay EUR 50,000 for the Domain Name. Complainant urges that this escalated price quoted by Respondent demonstrates bad faith and mala fide in registering and holding the Domain Name.
Complainant contends that “inaction” is within the concept of bad faith, as supported by the provisions of the Policy: paragraph 4(b) of the Policy identifies, without limitation, circumstances that are evidence of registration and use of a domain name in bad faith. One of these circumstances, paragraph 4(b)(iv) involves a positive action post-registration undertaken in relation to the domain name (i.e., using the domain name to attract customers to a website or other online location), while the other three circumstances contemplate either action or inaction in relation to a domain name. Furthermore, Complainant states that it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” – that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
Complainant states the particular circumstances of this case, which lead to this conclusion, are, inter alia:
- Complainant’s well-established NATURALS mark has a strong reputation and is widely known, as evidenced by its use since 1991.
- Respondent has provided no evidence of any actual or contemplated good faith use of the Domain Name.
- Respondent is attempting to monetize the Domain Name by transferring the same to any buyer who is willing to pay an escalated cost of EUR 50,000. Such an act by Respondent proves bad faith and is a gross infringement of Complainant’s trademark rights.
- Taking into account all of the above, it is impossible to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate; instead such use would infringe Complainant’s rights, such as through the tort of passing off, infringement of consumer protection legislation, or infringement of Complainant’s rights under the law.
Complainant further states that the use and existence of Domain Name will cause damage to Complainant’s business and reputation, and to customers and the general public. Any misrepresentation caused on account of the Domain Name would result in confusion and deception in the minds of customers. In this regard, domain names are emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations. Business transactions will soon be carried out only through Internet addresses rather than street addresses, post boxes or faxes. Complainant states that it will not be able to effectively pursue its business plans on the Internet unless the registration of the Domain Name is held by Complainant. Complainant states it is the legitimate owner of the domain names <naturals.in> and <naturals.lk>, through which it undertakes business and promotional activities. In view of the Domain Name’s registration, Complainant stands to lose financially and faces the imminent risk of dilution of brand value associated with the mark NATURALS.
Complainant submits that the facts above establish the legitimate rights of Complainant to the transfer of the Domain Name bearing its well-known trademark. Therefore, in the interest of justice and in the interest of the public at large, the Domain Name should be transferred to Complainant.
Respondent submitted a lengthy Response with attachments, which is summarized below. Respondent states he is an entrepreneur from the Republic of Korea, having registered the Domain Name on September 5, 2001 in good faith, after understanding the generic nature of the term “natural” and combining it with the letter “s”, as ordinarily used to indicate the plural tense.
Respondent claims that the Complaint is baseless, vexatious and devoid of merit. Respondent does not admit any of the grounds contained in the Complaint except those, which are expressly admitted below.
(i) Identical or confusingly similar
Under its first submission, Respondent claims that the word “naturals” is a generic, descriptive term and that Complainant has provided insufficient evidence to show that NATURALS has generated secondary meaning, even in Indian market.
Respondent states that the word “naturals” either alone or in combination with other terms has been adopted by innumerable businesses around the world. Respondent has provided evidence showing more than 5,000 trademarks including the word “naturals” registered around the world, as well as over 10,000 domain names that include “naturals”. Respondent claims that “naturals” is a generic word and contends that it has been widely held that where a domain name is a generic or descriptive term, it is difficult to conclude that there is a deliberate attempt to confuse. Further, because generic words are incapable of distinguishing one provider from another, trademark protection is denied to them.
Respondent observes that Complainant’s NATURALS trademark was registered in India in 2008, with an application filed in 2006 under Class 42 as a device/design mark, while Complainant also has a pending application listed as “Advertised” and with the status “opposed” since August 17, 2018. Respondent claims this application has no value to these UDRP proceedings. Complainant’s website at <naturals.in> was registered in 2005, but was not active until 2007, according to the Archive.org website (“www.archive.org”); that is, Complainant did not have an online presence and could not have appeared in Republic of Korean search engine before this date.
Respondent has submitted evidence that Respondent obtained a registered wordmark for NATURALS in the Republic of Korea in 2008, based on an application filed in 2007.
Respondent claims that while Complainant has provided details about its company, including figures as to the number of employees and franchises, this has been presented without evidence. Complainant has also referred to its Naturals Training Academy and its partnership with the CADD Centre since 2017 and that the CADD Centre has a presence in 24 countries. However, Respondent emphasizes that this partnership is just two years old and no formal documents have been presented. Moreover, the list of countries does not include the Republic of Korea.
Respondent argues that while Complainant claimed its mark NATURALS has been widely promoted, Complainant submitted only a few advertisements issued in a local newspaper from October 2008. These advertisements refer to locations within India. Further, a screen shot of Complainant’s website (on Archive.org) from early 2009 evidences the limited area of operation mostly within the South Indian state of Tamil Nadu, except to include Cochin in the neighboring state of Kerala. Further, while Complainant refers to celebrity endorsements, Respondent, on searching about those images, found that they mostly relate to year 2013 onwards, as Ms. Kareena Kapoor was appointed as Complainant’s brand ambassador in 2014. Respondent states that another article presented by Complainant is just a press release from Complainant’s site; Respondent contends there does not seem to be media recognition for Complainant’s brand.
Respondent emphasizes that while Complainant claims to be in existence since 1991, it has provided no evidence in this regard. Complainant applied for its trademark for the first time in 2006 and advertisements from 2008 were appearing in a local newspaper in the state of Tamil Nadu, India. Respondent claims the falsity of the reference to 1991 is demonstrated by Complainant’s trademark records (submitted by Complainant), which show “User Detail” dated as of January 1, 1999.
Respondent further contends there is no proper evidence presented as to the existence of the NATURALS mark since 1999 or 2001, which points to the lack of popularity of the brand in the initial years. The only evidence provided by Complainant is a reference to the year 2001 on a private website <hellybeautyparlour.in>, which looks like it is related to Complainant as it carries Complainant’s mark as a website logo. However, Respondent states that the domain name <hellybeautyparlour.in> was registered recently in March 2019 and cannot be referred to as a media article. Respondent argues that a neutral media article should have been presented from a famous website, not just from a local website that seems to be under the indirect control of Complainant.
Respondent observes that Complainant refers to a search result from Google, searched from Chennai, India (where Complainant is located), which shows local results from Chennai in the top preferences. Respondent states that Google is not a preferred search engine in the Republic of Korea, where Naver is called the Google of the Republic of Korea. The search results from Naver for the keyword “naturals” include no reference to Complainant.
Respondent denies that NATURALS has generated secondary meaning even in Indian market, as searching Google from Gurgaon in the northern Indian state of Haryana, India produces the first result for “Naturals Ice Cream” and the first page of results does not have direct reference to Complainant’s website at <naturals.in>. Further, the entry by Complainant in the Guinness Book of Records was done in April 2019, not in 2001.
Furthermore, in reference to the international exposure referred to by Complainant and abstracts of media exposure, Respondent argues that Complainant provides just screenshots from its own website at “www.naturalsacademy.com”, which was launched in 2017 and seems to be in association with the CADD Centre. The exact information produced by Complainant is available on this website.
(ii) Rights or legitimate interests
Respondent contends that the Panel must find that Respondent has a total lack of any rights or legitimate interests in the Domain Name, not merely that Complainant has a purported “better” rights or legitimate interests.
Respondent states the term “naturals” is a generic, longstanding and ubiquitous descriptive term referring to something that is related to nature, and can be referred to by the combination of the dictionary term “natural” and the letter “s”. This combination can suggest many different meanings, such as natural solutions, natural skin, natural stone, natural styling, natural spark, natural spa, natural selection, natural scene, natural shot, natural seeds, and so on. The generic nature of this keyword is illustrated by the number of domain names and trademark registrations globally for the keyword “naturals”.
Contrary to Complainant’s contentions, Respondent contends that it has rights and legitimate interests in the Domain Name. This interest stems from the fact that the Domain Name is wholly comprised of common English dictionary word, with a suffix “s”. Respondent states that when combined, as in “naturals”, it has a descriptive and well-known meaning that is wholly separate and distinct from Complainant’s brand name. Respondent asserts that it has long been held that when a domain name is descriptive, the first person to register it in good faith is entitled to the domain name, and this is considered a legitimate interest.
Respondent states that there are over 10,000 domain names registered that include the keyword “naturals”. Respondent claims Complainant has no monopoly over this common term and it was not invented by Complainant. Respondent has provided evidence of numerous businesses around the world using the mark, brand or name “naturals”, either alone or in combination with other words, in various fields such as food, health and beauty. Even in India, where Complainant’s application under Class 3 is pending, Respondent states that a third-party had submitted an application for trademark for the mark NATURALS in 1995 (trademark application no. 673530), which shows that Complainant has no exclusive rights to the mark.
Respondent submits that he had no knowledge of Complainant at the time he registered the Domain Name in 2001. Complainant has not provided proper evidence as to its existence or the popularity of its brand in 2001, even in India, while the Domain Name was registered by Respondent far away in the Republic of Korea. Therefore, Respondent claims Complainant cannot argue that it was known outside of its state of origin, i.e., Tamil Nadu, India even until 2009, or in the Republic of Korea, the location of Respondent. Further, Respondent could not have searched the Indian trademark database in 2001, firstly, because that database was not online, and secondly, even if it had been, Complainant had applied for its trademark only in 2006 and therefore did not exist in the trademark database in 2001. In addition, Complainant had no online presence in 2001. There was no way Respondent could have known of Complainant’s existence in 2001.
Further, while Complainant states its NATURALS mark is well-known in India and neighboring jurisdictions, Respondent asserts that “neighboring jurisdiction” could only mean Sri Lanka, where Complainant has a website at “www.naturals.lk”, which seems to have been registered in 2018. Respondent argues that Complainant’s reference to a presence in Singapore is not supported by any evidence. The store locator on the <naturals.in> website provides for locations in India where Complainant seems to have major presence.
Respondent states that it registered the Domain Name on September 5, 2001 with the intention to use it in a legitimate business. Respondent claims this point is supported by a screenshot of Respondent’s website from Archive.org dated January 25, 2003, which read as follows:
“Dear people offered,
We have a plan to use this name for our business.
However recently a lot of people have offered to us for it, we have changed our minds.
This name may be sold.
Respondent states that he had a legitimate business purpose for the Domain Name, but then decided that it could be sold because he was receiving a lot of offers. Respondent states that he listed the Domain Name for sale on Sedo for valuation purposes, which is evident from an Archive.org screenshot dated May 1, 2007. Respondent contends that speculating in generic domain names is considered a legitimate interest, as long as the proof establishes that the respondent either has rights or legitimate interests in the domain name, or the complainant is unable to prove bad faith registration and use. Though the Domain Name was never sold, Respondent received numerous queries, and one of these offers was referenced in an article at “www.DomainInvesting.com”.
Respondent claims, however, that in the back of his mind he still had serious business plans and as a result, in 2007 applied for a trademark with the Korean Intellectual Property Office. Respondent states that the trademark certificate shows registration in the owner’s name, Deock-Ho Kang, on August 6, 2008, and evidences demonstrable preparations to use the Domain Name and hence a legitimate interest.
Respondent states that a webpage for the Domain Name was put up around 2009, with a screen shot visible through Archive.org, which makes reference to natural sources, drug treatment, women’s fitness, etc. Respondent further states that later, more serious plans for the Domain Name were developed in the form of a business plan, a copy of which was submitted by Respondent. The business plan is 13 pages and provides information as to the planned uses for the Domain Name as a nature friendly brand, including health food, fashion, organic and beauty products. Since the business plan was developed, Respondent claims he made efforts to raise funds for a startup, but it never materialized.
From 2014 onwards, the DNS services for the Domain Name were suspended by the service provider and a notice appeared for the Domain Name in the Korean language. The notice appeared until October 2019, when it changed and the Domain Name now has another notice in the Korean language that translates into English as “This page does not exist”. Respondent states that, in any case, there was never any reference to Complainant on the webpage displayed at the Domain Name.
Respondent recently filed for a trademark under classes 18, 30, 31, and 32, dated October 22, 2019. Respondent states that these classes relate to the proposed business plan. Respondent claims he can still pursue the legitimate interest as laid down in the business plan, given the generic nature and wide use of the keyword in the Domain Name.
Further, while Complainant refers to the case, CADD Centre Training Services Pvt Ltd v. Jeff Park, WIPO Case No. D2015-1008, Respondent argues this case is not applicable. The domain name there, <caddcentre.com>, was linked to a website with sponsored links and the term “Cadd Centre” is not a dictionary word or combination of generic words.
Respondent concludes that Complainant has not made a prima facie case that Respondent lacks a right or legitimate interest in the Domain Name, especially as Complainant’s rights post-date registration of the Domain Name. Respondent asserts that Complainant’s attempt to acquire the Domain Name in the aftermarket demonstrates Respondent’s legitimate interest in the Domain Name. Respondent decided to acquire an inherently valuable Domain Name because it was available for registration, five years before Complainant’s trademark was applied for in India.
(iii) Registered and used in bad faith
Respondent contends that both bad faith registration and use must be proven for Complainant to prevail. If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years or intervening events, later be deemed to have been registered in bad faith.
Respondent contends that to prove bad faith registration, it must be shown that Respondent registered the Domain Name, not because of its common generic or descriptive meaning, but rather because it corresponded to Complainant’s trademark. Respondent claims this reflects the requirement under Policy that in order to find bad faith registration and use, a respondent must have targeted the complainant or its trademark, or at least had the complainant in mind, when registering the disputed domain name.
Respondent denies that the fact the Domain Name incorporates Complainant’s trademark is evidence of bad faith. Respondent emphasizes that he could not have targeted Complainant’s trademark when registering the Domain Name, because Complainant’s trademark did not exist at the time of the Domain Name’s registration in 2001. Respondent argues that Complainant’s existence at that time is doubtful given the evidence produced with the Complaint. Complainant’s trademark was applied for in 2006 and registered in 2008. If Complainant did exist, it had no reputation outside the state of Tamil Nadu in Southern India. Respondent contends that Complainant has provided no information about its services or where they were offered, and no evidence of any advertisements, marketing spend and sales volumes in various countries around the world at the relevant time. Simultaneously, Respondent also had its trademark registered in the Republic of Korea in 2008; if Complainant had any presence in the Republic of Korea, it should have opposed Respondent’s trademark application.
Thus, Respondent asserts there is no evidence to support Complainant’s contention that the Domain Name was registered because of Complainant. There has been no evidence provided that purports to show that Respondent was aware of, or ought to have been aware of, Complainant. Respondent contends that if Complainant fails to produce evidence of its reputation as it existed at the time Respondent registered the Domain Name, the inference must be that it had none. Respondent claims the evidence demonstrates that “naturals” is widely used for its descriptive value.
Respondent contends that false allegations have been levelled against him. Respondent denies that his motive for registering the Domain Name was to sell it for compensation because it was comprised of a trademark. Respondent claims it is shocking that Complainant is trying to label Respondent as a cybersquatter, without producing a single piece of evidence. Respondent challenges Complainant to show proof of any prior UDRP proceeding brought against Respondent.
Respondent states that he did not approach Complainant for the sale of the Domain Name. Instead, Complainant approached Respondent through the Sedo brokerage service for purchase of the Domain Name and Complainant was quoted EUR 50,000 by Sedo. Respondent contends that it has already been submitted that speculating in domain names is a legitimate interest. Respondent states that Sedo may have quoted the price on Respondent’s behalf and he cannot recall this particular communication. In any case, the name of the interested party holding any trademark never came to Respondent’s knowledge.
Respondent contends that Complainant knew Respondent had legitimate rights in respect of the Domain Name and brought this proceeding only because it was unhappy with the price quoted. There is nothing “fraudulent” in responding to a commercial enquiry for purchase of a domain name. Respondent has received numerous unsolicited inquiries and offers from third parties desiring to purchase the Domain Name. At no time did Respondent solicit the sale from Complainant; it was the other way round. Complainant tried to purchase the Domain Name via an agent on an unknown date at the Sedo platform. Under the UDRP, the position is clear that responding to requests to purchase is not considered bad faith. Further, Respondent states that reference to Complainant’s trademark is absent on the online parking page. Therefore, Respondent did not target Complainant either at the time of registration or, in any case, the Domain Name is not being used in bad faith now.
Respondent asserts that Complainant’s delay in taking action against Respondent over the past 18 years raises the inference that Complainant did not believe that the Domain Name was registered or used in bad faith. Respondent concludes that Complainant slept on its rights and filed the Complaint only after it was unsuccessful in purchasing Domain Name from the independent broker.
(iv) Reverse Domain Name Hijacking
Respondent seeks a finding of reverse domain name hijacking (“RDNH”), contending there is no basis for Complainant’s claim and Complainant (through its counsel) knew or should have known this before filing the Complaint. Respondent claims that Complainant cannot make a prima facie case that Respondent lacks any rights or legitimate interests in the Domain Name, as Complainant’s rights post-date registration of the Domain Name. Further, Complainant provides no proper evidence of registration and use of the Domain Name in bad faith.
Respondent submits that the Complaint has been brought with an intent to hijack the Domain Name from Respondent, as Complainant knew Respondent had legitimate rights in respect of the Domain Name. This is evident from the Complaint where it states “Complainant has not licensed or otherwise permitted Respondent to register the mark ‘NATURALS’”. Respondent asserts that this proves Complainant had knowledge of Respondent’s trademark and of Respondent’s legitimate interests, as the WhoIs shows the year of registration for the Domain Name as 2001.
Respondent states that due diligence would have shown that Complainant could not prove two of the three requirements under the Policy, and that this is a “Plan B” case, calculated to steal a highly valuable and long-held Domain Name from its rightful owner after failing to acquire it in the marketplace.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the NATURALS trademark, based on its trademark registration in India and use of the mark in connection with its business in India. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”)
Further, although Respondent has emphasized that Complainant owns a design mark rather than a word mark in India, the Panel determines that the Domain Name is identical or confusingly similar to the textual elements of the NATURALS mark, as the Domain Name incorporates the mark in its entirety. WIPO Overview 3.0, section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”).
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, Complainant has submitted that Respondent is trying to take advantage of the goodwill and reputation associated with Complainant’s NATURALS trademark, although Respondent has no connection with Complainant. Complainant has indicated that it has not licensed or otherwise permitted Respondent to register the NATURALS mark, nor has Complainant permitted Respondent to use any domain name incorporating the mark. Complainant alleged that the Domain Name incorporates Complainant’s well-established trademark NATURALS in its entirety and that such use of the Domain Name is considered evidence of bad faith registration and use under the Policy. Complainant asserts that Respondent is a cybersquatter and that it was Respondent’s motive to register the Domain Name comprised of a popular trademark to negotiate to sell the Domain Name for an escalated price.
The Panel observes that a number of Complainant’s allegations were successfully rebutted by Respondent. In his Response, Respondent indicated that he registered the Domain Name as a descriptive word in 2001, well before Complainant had established any trademark rights, or at least well before Respondent had knowledge, or ought to have had knowledge, of Complainant and its NATURALS trademark rights in India. Complainant applied for its trademark in India in 2006 and was granted registration in 2008, after Respondent registered the Domain Name in 2001. The Panel finds that Complainant has provided insufficient evidence that its NATURALS mark was well known including outside of India, at least at the time when the Domain Name was registered. The Panel finds, on the balance of the probabilities, that Respondent did not register the Domain Name in 2001 because it incorporated Complainant’s NATURALS mark in its entirety and primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs.
Respondent contends that his right or legitimate interest in the Domain Name stems from the fact that the Domain Name is wholly comprised of the common English word “natural”, along with the letter “s”. Respondent claims that the first person to register a dictionary word in good faith as a domain name is entitled to it, and this is considered a legitimate interest. However, WIPO Overview 3.0, section 2.10.1 provides in relevant part that
“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”
Thus, Respondent being the first in time to register the word “naturals” does not necessarily or automatically confer any rights or legitimate interests in respect of the Domain Name.
Respondent states that he registered the Domain Name with the intention of using it in a legitimate business. That intention apparently later changed, as Respondent admitted that he had decided, at least for a period of time, to sell the Domain Name. However, Respondent claims that speculating in generic domain names is considered a legitimate interest, as long as a domain name is not registered or used in bad faith. Respondent further states that in 2007, he had serious business plans and as a result, he applied for the Republic of Korean trademark. Respondent claims this 2007 trademark evidences demonstrable preparations to use the Domain Name and hence a legitimate interest. Respondent further states that he later developed a business plan and made efforts to raise funds for a startup, but this never materialized. Finally, Respondent admits that from 2014 onwards, the DNS services for the Domain Name were suspended by the service provider and the webpage for the Domain Name has a notice in the Korean language that translates into English as “This page does not exist”.
WIPO Overview 3.0, section 2.11, indicates that “Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint”. Respondent has admitted that from 2014 until the present, the Domain Name has not been used. At most, it was apparently listed for sale during certain periods on the Sedo domain brokerage website. Respondent’s lack of use for the last five years does not reflect any rights or legitimate interests in the Doman Name.
Respondent points to its recent application for a trademark, filed on October 22, 2019. However, that application was made after the Complaint in this case was filed on October 14, 2019. WIPO Overview 3.0, sections 2.12.1 and 2.12.2, provide in relevant part that while panels “have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name”, the “existence of a respondent trademark does not […] automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction).” Given the circumstances in this case, in which Respondent filed for a trademark after the Complaint was filed by Complainant, this recent application does not give rise to any rights or legitimate interests in the Domain Name.
In the case at hand, there is no evidence that Respondent is trying to trade off on Complainant’s NATURALS trademark. At the same time, however, the Panel determines, based on the record in this case, that Respondent has not shown any rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel concludes, based on the entire record in this case, that Complainant has failed to establish that Respondent registered and used the Domain Name in bad faith.
First, based on the record and as discussed above, the Panel finds that there is no evidence that Respondent was aware of Complainant and its NATURALS trademark when registering the Domain Name in 2001. The Domain Name was registered well before Complainant applied to register its NATURALS trademark in India in 2006. Further, there is no evidence that Complainant’s NATURALS mark was known in the Republic of Korea. See Sadig Alakbarov v. Yuxue Wang, WIPO Case No. D2019-2253 (“Above all, there is no basis from this record on which to find that Respondent targeted Complainant or its GREENMOOD mark. Respondent acquired the Domain Name in 2012, two years before Complainant was formed and at least two years before Complainant used that mark in commerce. There is no evidence that Complainant’s mark is known at all in Australia. Complainant’s mark was not registered until 2018, and only in the European Union.”)
Further, as to Respondent’s use of the Domain Name, there is no evidence that it was used in bad faith. Respondent provided some evidence – a previous trademark registration in the Republic of Korea dating from 2008 and a business plan – of his efforts to use the Domain Name in connection with what would amount to a bona fide offering of goods or services if realized. Although Respondent has not used the Domain Name since 2014, there is no evidence that Respondent made any efforts to target Complainant and its NATURALS trademark through use of the Domain Name at any time. The Panel rejects the argument that listing the Domain Name, which is comprised of the English descriptive word “naturals”, with the Sedo domain brokerage, amounts to bad faith use. Further, Respondent did not approach Complainant to sell the Domain Name; rather, the evidence indicates that Complainant approached the Sedo service to receive a price quote.
Finally, the Panel also rejects Complainant’s argument that Respondent’s “passive holding” of the Domain Name amounts to bad faith. See Sadig Alakbarov v. Yuxue Wang, supra. 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.
Accordingly, Complainant has failed to satisfy the third element of the Policy.
D. Reverse Domain Name Hijacking
Respondent requests that Complainant be found to have engaged in reverse domain name hijacking (“RDNH”). The Panel finds, on the entire record, that this is not a case of RDNH.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at [RDNH] or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Panels have found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. In this case, the Panel finds that Complainant satisfied two of the three elements under the Policy. Complainant seems to have been convinced that, while it has trademark rights in its NATURALS mark, Respondent was only using the Domain Name for the purpose of offering it for sale to Complainant at an amount clearly in excess of Respondent’s out-of-pocket costs. The file does not show that Complainant knew or should have clearly known that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint and before receiving Respondent’s Response.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: January 5, 2020