WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp
Case No. D2019-2642
1. The Parties
The Complainant is Nalli Chinnasami Chetty, India, represented by DePenning & DePenning, India.
The Respondent is Anthony Nalli, FourPoints Multimedia Corp, Canada.
2. The Domain Name and Registrar
The disputed domain name <nalligroup.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 4, 2019, the Center also sent an email requesting clarification regarding mutual jurisdiction. The Complainant filed an amended Complaint on November 6, 2019 and provided clarification on the location of mutual jurisdiction.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2019.
The Center appointed David H. Bernstein as the sole panelist in this matter on December 9, 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.
Although the written notification sent by courier to the Respondent was not delivered because there was no one at the address provided to accept delivery, there is no indication in the record that the email notification to the Respondent bounced back or was otherwise unsuccessful. The Panel finds that the Center discharged its obligation to provide notice as provided in the Rules.
4. Factual Background
The Complainant is Nalli Chinnasami Chetty, a manufacturer and retailer of silk clothing and other products, established in the year 1928 and headquartered in Chennai, India. The Complainant first claims use of the mark NALLI in commerce in 1935. The Complainant applied for registration of the mark NALLI in India (Reg. No. 472754) on May 27, 1987. The Complainant is also the proprietor of trademark registrations for NALLI with the United States Patent and Trademark Office (the “USPTO”) (United States of America (“U.S.”) Reg. No 2,444,608 and 2,100,656), and the appropriate offices in the European Union (Reg. Nos. EU001373786 and EU005690839), Australia (Reg. Nos. 602236, 602237, and 1155609), Canada (Reg. Nos. 779929 and 482448), Sri Lanka (Reg. Nos. 67348 and 67349), Singapore (Reg. Nos. T1203648D, T06/253501, T11/04869A, T98/02255Z, T06/25354A, and T98/02256H), Mauritius (Reg. Nos. 15764/2014 and 11395/1992), New Zealand (Reg. No. 761744), and the United Kingdom (Reg. Nos. 3020853, 2309588, and 1518192). The Complainant owns fifty-five domains incorporating NALLI.
The disputed domain name was registered on August 27, 2014, by the Respondent. The webpage identified by the disputed domain name is not currently being utilized to sell goods or services, and the Complainant does not allege that the domain name has ever been used for such purpose.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the NALLI trademark in which it has rights. It provided evidence of its various trademark registrations for NALLI globally.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The totally of the Complainant’s allegations concerning whether Respondent has rights or legitimate interests is as follows:
[(i)] The Complainant has not licensed or otherwise permitted the Respondent to use its trade/service mark NALLI or to apply for any domain name incorporating the said trade/service mark.
[(ii)] The Respondent has not made any legitimate offering of goods or services under the mark NALLI through the disputed domain name.
[(iii)] It is further stated that there could be no plausible explanation for the use of the disputed domain name <nalligroup.com> by the Respondent other than to misappropriate the reputation of the Complainant’s trade/service mark.
[(iv)] Therefore, the fact that the sole purpose of the Respondent’s registration for the disputed domain name is to misappropriate the reputation of the Complainant’s trade/service mark NALLI and to divert traffic from the Complainant’s websites, makes it apparent that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant contends that the Respondent registered and used the disputed domain name in bad faith. The totality of the Complainant’s allegations concerning the Respondent’s alleged bad faith use and registration is as follows:
The Respondent had constructive notice of the Complainant’s rights in the trade/service mark NALLI by virtue of the Complainant’s well spread reputation, use and registrations. Some notable decisions stating that:
(i) A respondent should have known of a complainant’s trademark if it is shown to be well-known or in wide use on the Internet or otherwise;
(ii) Such knowledge of the Respondent is an indicator of bad faith of the Respondent in registering the disputed domain name;
(iii) The passive holding of a domain name has been held to be the use of the domain name in bad faith; and
(iv) The very use of a domain name by someone with no connection with the Complainant suggests opportunistic bad faith
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To prevail, the Complainant must prove all three elements set out in paragraph 4(a) of the Policy by a preponderance of the evidence:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has proven by a preponderance of the evidence that the disputed domain name is confusingly similar to the Complainant’s trademark NALLI.
However, the Panel finds that the Complainant has failed to prove by a preponderance of the evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name or that the disputed domain name has been registered and is being used in bad faith.
Moreover, the Panel finds that the Complainant is guilty of reverse domain name hijacking.
A. Identical or Confusingly Similar
The Complainant has submitted evidence of its ownership of registrations for NALLI, with stylized letters, in India, the United States of America, Canada, Australia, New Zealand, Sri Lanka, Singapore, Mauritius, and the United Kingdom. The Complainant also notes that the Complainant’s rights in the trademark NALLI were recognized in a previous WIPO decision, Nalli Chinnasami Chetty v. James H. Park, WIPO Case No. D2017-1373 (<nalli.net>). As such, the Complainant has established that it has rights in the trademark NALLI. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.2.
Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides three circumstances that, if found by the Panel to be proven based on its evaluation of all of the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the Complainant offered conclusory allegations that track these elements of the Policy, the Complainant fails to address the obvious fact that the Respondent’s last name is “Nalli”. Notwithstanding this fact (which was disclosed when the privacy shield was lifted by the Registrar as part of the Registrar Verification), the Complainant continues to contend that there is no plausible explanation for the use of the disputed domain name by the Respondent other than to misappropriate the reputation of the Complainant’s trademark. The Complainant does not, for example, dispute that the Respondent’s name really is Anthony Nalli, or that the Respondent is not really known by the name Anthony Nalli.
In the absence of evidence addressing this point, the Panel accepts as true what appears on the face of the Registrar Verification, which is that the Respondent’s name really is Anthony Nalli and that Mr. Nalli can be reached through FourPoints Multimedia Corp. in Ontario, Canada. In fact, this Anthony Nalli appears to be a legitimate person – a Wikipedia entry for Anthony Nalli includes the following information:
Anthony Nalli is a Canadian television producer and host of the independently produced television series The Aviators, which airs on a majority of PBS stations across the United States, on Bell TV in Canada, on Discovery Channel overseas, as well as on iTunes, Google Play, and Amazon. The eighth season of the show is expected in 2020 and Anthony’s production company, FourPoints Television Productions, has also produced Air Boss, Jet Truck, and AutoExotica, and in October of 2018 announced a new series, The RVers. “en.wikipedia.org/wiki/Anthony_Nalli”. The reference to FourPoints Television Productions in the Wikipedia entry reinforces a finding that this entry refers to the same Anthony Nalli who is the registrant of this domain name. Similar information about Anthony Nalli is also available at “www.imdb.com/name/nm4006712/”.
Although the Respondent has not submitted a response, the Panel is permitted to consult public sources of reliable information, like Wikipedia and IMDB entries. See WIPO Overview 3.0 at section 4.8. Relying on that information, the Panel finds that the Respondent identified in the Registrar Verification is in fact Anthony Nalli, the Canadian television producer, and that Mr. Nalli is known by his name Anthony Nalli. As such, Mr. Nalli plainly has rights in a domain name that combines his last name, Nalli, with the descriptive term “group”. See Policy paragraph 4(c)(ii).
Contrary to the Complainant’s bald assertion, there are in fact, several plausible explanations as to why the Respondent may have chosen to register the disputed domain name incorporating his name, none of which implicate an intent to misappropriate the Complainant’s trademark reputation. For example, in G.A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537 (<armani.com>), the Panel noted that “[i]t is very common practice for people and organizations to register domain names which are based upon initials and a name, acronyms or otherwise variants of their full names”. The respondent in that case had a legitimate interest in registering a domain name containing his name, initials, or a combination thereof.
The Complainant has offered no reason why the same conclusion should not apply here. See, generally, WIPO Overview 3.0 at section 2.3. The Panel therefore holds that the Complainant has failed to meet its burden of proving by a preponderance of the evidence that the Respondent lacks rights or legitimate interests in the dispute domain name.
As an aside, the Panel also notes that, as observed on the “Internet Archive: Wayback Machine” (available at “web.archive.org”), the disputed domain name resolved (on September 3, 2005, October 6, 2015 and October 30, 2016) to a website with a logo “NALLI Group of Companies” and the message “A Family of Enterprises [.] For decades, the Nalli name has been associated with entrepreneurial exceptionalism. The NALLI Group of Companies encompasses a broad and unique range of enterprises, each a model of excellence in business execution.”, and then the website reproduced the following “NALLI Health and Wellness”, “NALLI Television Productions”, and “NALLI Information Technology”. The Panel does not find that Complainant had an obligation to review these archived pages, but review of these pages does reinforce the Panel’s finding that the Respondent has rights and legitimate interests in the disputed domain name.
Accordingly, the Complainant has failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
None of these four circumstances exist here, nor is there any other evidence of bad faith registration or bad faith use. In fact, the Complainant offers no evidence whatsoever of potential bad faith use and registration. Instead, the Complainant argues in conclusory fashion, with no supporting evidence that the registration and use was in bad faith because the Respondent is trying to usurp the reputation and goodwill of the Complainant’s trademark through the disputed domain name. The Respondent’s webpage does not reference the Complainant’s business or mark in any way, nor does it include any links related to the Complainant’s business.
It is true, as the Complainant notes, that the webpage is devoid of content, offers no goods or services, and is seemingly incomplete even though the disputed domain was registered in 2014. The Complainant views these facts as evidence of its contentions but they prove no such thing. At best, they show that Mr. Nalli registered this domain name five years ago but has not yet made any use of the name for a website (though it is possible that he is making other use, such as using the disputed domain name for email). Given the absence of any content on the website, this website can not support the Complainant’s contentions that the Respondent registered and is using the disputed domain name in bad faith, such as to take advantage of the Complainant or its trademark rights or to usurp the Complainant’s goodwill.
The UDRP decisions on which the Complainant relies do not support its contentions. In Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 (<backberry.com>), the Panel found that the complainant’s trademark, Blackberry, was very well known and the disputed domain name must have been chosen with the mark in mind; tellingly, the Respondent in that case was not personally named Mr. Backberry. Similarly, in SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 (<sembcorp.com>), the Panel concluded that the respondent acted in bad faith because the registrant either knew or ought to have known of the complainant’s rights in the name “SembCorp” due to the company’s substantial presence in the region; again, the respondent in that case was not personally known as Mr. Sembcorp. Moreover, in each of these cases, the registrant engaged in activity evidencing that the disputed domains were registered for a bad faith purpose in light of the registrant’s knowledge of the complainant’s marks. In Research in Motion Limited v. Privacy Locked LLC/Nat Collicot, supra, the webpage was used as a parking page containing sponsored advertising links, thereby resulting in commercial gain for the respondent by attracting visitors to the webpage in the mistaken belief they were visiting a site associated with the complainant. In SembCorp Industries Limited v. Hu Huan Xin, supra, the registrant attempted to sell the domain name to the complainant for a sum of money in excess of the registrant’s out of pocket registration expenses. This case does not present similar facts and does not warrant a finding of bad faith. Even if the Respondent knew or should have known of the NALLI trademark, the Complainant has not offered any evidence that the Respondent proceeded with the registration of the disputed domain name for a bad faith purpose, rather than for the purpose of registering a domain name that corresponds to the Respondent’s last name.
Accordingly, the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, “[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking 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”. It is the Panel obligation to consider whether a finding of Reverse Domain Name Hijacking should be made even in the absence of a request from the Respondent and even in the absence of a Response.
Section 4.16 of the WIPO Overview 3.0 notes that a panel may find Reverse Domain Name Hijacking when there are “facts which demonstrate that Complainant knew it could not succeed as to any of the required elements—such as Complainant’s lack of relevant trademark rights, clear knowledge of Respondent rights or legitimate interests, or clear knowledge of Respondent bad faith such as […] facts which demonstrate that Complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint”.
The conduct in this case falls under the category of Reverse Domain Name Hijacking. Once the privacy shield was lifted through the Registrar Verification, the Complainant and its counsel knew that they could not possibly succeed on any fair interpretation of the facts in this case. By filing an amended Complaint and repeating the same arguments that were in the initial Complaint, the Complainant and its counsel abused the WIPO administrative process in an attempt to obtain the disputed domain despite the inconvenient fact that the Respondent was Mr. Nalli. Rather than address that point, the Complainant and its counsel simply repeated the same arguments, baldly asserting that Mr. Nalli could have no plausible reason for registering the disputed domain name <nalligroup.com> other than to usurp the Complainant’s goodwill. The Complaint was therefore completely devoid of any facts or arguments that could support a finding that the Respondent lacked rights or legitimate interests in the disputed domain name.
The Complainant and its counsel also provided no evidentiary support whatsoever to support their argument that the Respondent must have registered and used the disputed domain name in bad faith. As such, they completely ignored the requirements set out in the Policy for establishing bad faith registration and use of a domain name. The Complainant and its counsel ignored the potential legitimate reasons as to why the Respondent may have registered the disputed domain name, disregarded precedent and unfavorable facts in concluding that the webpage (which makes no connection whatsoever to the Complainant) was an attempt to misappropriate its trademark reputation, and offered no more than unsupported allegations.
As such, the Panel finds the Complainant guilty of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied. Moreover, in light of the Complainant’s and its counsel’s abusive bad faith in filing the amended Complaint, the Panel finds the Complainant guilty of Reverse Domain Name Hijacking.
David H. Bernstein
Date: December 18, 2019