WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nalli Chinnasami Chetty v. WhoisGuard, Inc. / Manjunath K

Case No. D2020-1202

1. The Parties

The Complainant is Nalli Chinnasami Chetty, India, represented by DePenning & DePenning, India.

The Respondent is WhoisGuard, Inc., Panama / Manjunath K, India.

2. The Domain Name and Registrar

The disputed domain name <nallii.xyz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2020, 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 May 18, 2020, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 22, 2020.

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 May 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2020. On May 31, 2020, the Center received a communication from the Respondent requesting the removal of the disputed domain name from the Registrar. On June 5, 2020, the Complainant requested the suspension of the administrative proceeding, and the proceeding was accordingly suspended. On July 3, 2020, the Complainant requested the Center to reinstitute the proceeding. The proceeding was reinstituted on July 5, 2020. The Center notified the commencement of Panel appointment process on July 16, 2020.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on July 26, 2020. 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

The Complainant, Nalli Chinnasami Chetty, is a registered partnership firm, headquartered in Chennai, India. The Complainant established in the year 1928 is a leading manufacturer and merchant, which deals in readymade garments, fashion accessories, textile goods under its trademark NALLI through its various showrooms all over the world. The Complainant claims that it has been using the trademark NALLI on its products continuously since 1935. The Complainant states that it also trades through its website hosted on <nalli.com> and has been using the same domain name to promote the sale of its products online. The said domain name has been registered on April, 28, 1998. The WhoIs search result of the domain name of the Complainant, including a screenshot of the website hosted on the same has been attached as Annex 4 to the Complaint.

Further, the Complainant has registered various domain names comprising of its trade/service mark NALLI. A list of fifty-five such domain names have been furnished by the Complainant and the same attached as Annex 5 to the Complaint.

The Complainant is the registered proprietor and has obtained statutory protection for its trademark NALLI in various jurisdictions across the world, including India. The worldwide registration details furnished by the Complainant for its trademark NALLI are as under:

I. European Union Trademark No. 001373786 in respect of goods in International Classes 24 and 25, which was filed on November 2, 1999, and registered on March 7, 2005;

II. European Union Trademark No. 005690839 in respect of goods in International Classes 14, 20 and 24, which was filed on February 15, 2007, and registered on February 6, 2008.

III. Indian Registered Trademark No. 472754 in respect of a range of goods in International Class 24 and which was filed on May 27, 1987, and registered on February 15, 1993;

IV. Indian Registered Trademark No. 903811 in respect of clothing and related goods in International Class 25, which was filed on February 16, 2000, and registered on March 14, 2005;

V. United States Registered Trademark No. 2,100,656 in respect of goods in International Class 24, which was filed on March 13, 1995, and registered on September 30, 1997; and

VI. United States Registered Trademark No. 2,444,608 in respect of goods in International Classes 24 and 25, which was filed on June 15, 1993, and registered on April 17, 2001.

Copies of trademark registration certificates and extracts from the online records of the Indian Trademarks Registry pertaining to the Complainant’s NALLI trademark registrations have been attached as Annex 8. Further copies of relevant online extracts from the Unites States Patent and Trademark Office and European Union have also been attached as Annex 9.

According to the WhoIs Records, the disputed domain name <nallii.xyz> had been registered on February 27, 2020. Extract of the WhoIs search result for the disputed domain name has been attached as Annex 1 to the Complaint. A perusal of Annex 2 attached to the Complaint clearly sets out that the disputed domain name resolves into a landing page which contains various references to “www.nallii.xyz”. The said page also features the following text namely “Nalli – Collection of Free Porn Videos” at the top and “Welcome to World Press. This is your first post. Edit or delete it, then start writing!” in the centre.

5. Parties’ Contentions:

A. Complainant

The Complainant contends tha by virtue of long, continuous and extensive use of its trademark NALLI for about nine decades (at least since the year 1928) it has acquired a significant reputation. The Complainant states that the trademark NALLI is arbitrary in relation to the Complainant’s business and has been uniquely adopted in relation of the business of the Complainant. The Complainant contends that it has devoted an enormous amount of time, money, effort, and energy in promoting and advertising the said trademark in print and online media and that the said trademark is consequently identified solely with the Complainant.

The Complainant’s rights in its trademark / name NALLI have also been recognized in a previous UDRP Panel decision Nalli Chinnasami Chetty v James H Park; WIPO Case No. D2017-1373.

The Complainant contends that the disputed domain name <nallii.xyz> is confusingly similar to the well-known trademark NALLI of the Complainant – by any yardsticks of comparison, be it aural, visual and structural. The Complainant states that it has overwhelming common law as well as statutory rights in its trademark NALLI in India and foreign jurisdictions. In light of the same, the Complainant argues that it is the sole legitimate owner of the trademark NALLI.

The Complainant states that the Respondent’s use of the word “nallii)” in its entirety in the disputed domain name <nallii.xyz>is bound to induce members of the public and trade to believe that the Respondent has a trade connection, association, relationship or approval with/of the Complainant, when it is not so. The Complainant contends that despite the addition of the letter “i” in the disputed domain name, the same does not distinguish it from the Complainant’s trademark NALLI in any manner. The Complainant states that the disputed domain name is still phonetically identical to its NALLI trademark. The Complainant argues that a high degree of similarity continues to exist between the disputed domain name <nallii.xyz> and the Complainant’s trademark NALLI.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name <nallii.xyz>. The Complainant contends that the Respondent has not made any legitimate offering of goods or services under the trademark NALLI through the disputed domain name nor is the use authorised. The Complainant states that there could be no plausible explanation for the registration of the disputed domain name <nallii.xyz> by the Respondent other than to misappropriate the reputation of the Complainant’s trademark.

The Complainant contends that given the high degree of confusing similarity between the disputed domain name and the Complainant’s trademark NALLI and taking into account that the Respondent is from the State of Tamil Nadu, India, where the Complainant commenced its business and continues to operate several stores till date, it is obvious that the purpose of the Respondent’s registration of the disputed domain name is to misappropriate the reputation of the Complainant’s trademark.

The Complainant further contends that the Respondent has registered the disputed domain name in bad faith. Placing reliance on the registration details of the disputed domain name, the Complainant points out that the Respondent is from the State of Tamil Nadu where the Complainant commenced its business several decades ago.

The Complainant states that taking into account the well spread reputation and goodwill, incessant use and registration of the Complainant’s trademark NALLI in India and foreign jurisdictions, the Respondent ought to have known of the Complainant’s rights in the trademark NALLI. The registration of the disputed domain name <nallii.xyz> was consequently in bad faith.

The Complainant contends that in view of the extensive reputation and goodwill of the Complainant’s trademark NALLI in India the registration of the disputed domain name, <nallii.xyz> is nothing but a calculated attempt by the Respondent to exploit the commercial goodwill and reputation of NALLI (in India). Further, the Complainant states that the Respondent has not made any legitimate offering of goods or services through the disputed domain name. Lastly, the Complainant argues that the Respondent is only attempting to usurp the reputation and goodwill of the Complainant’s trademark NALLI through the disputed domain name.

B. Respondent

The Respondent did not provide a formal reply to the Complainant’s contentions. In an informal email communication with the Center dated May, 31, 2020, the Respondent wrote:

“I could see that the domain nallii.xyz was locked due to UDRP dispute. The domain nallii.xyz I ordered from Namecheap.com which was not my fault also no contents were added to the domain nallii.xyz. How come this dispute?

Also I don't want this domain nallii.xyz. I just don't need any problems with my domains. Contacted Namecheap and they are not telling the issue which is not my fault.

Namecheap only delivered this domain to me, so if any issues occurs for the domain nallii.xyz, i am not responsible and the namecheap.com is the responsible. Why should they sell this domain to me.

I already requested to remove this domain. If you need this domain contact Namecheap.com not me.”

6. Discussion and Findings:

As noted above, the Respondent had not furnished any formal Response to the Complainant’s allegations within the stipulated time period. According to paragraph 14(a) of the Rules, where there is a failure by the Respondent to provide a Response to the allegations of the Complainant, as in the present case where the Response had to be filed by July 14, 2020, the Panel in accordance with paragraph 14(b) shall draw such inferences therefrom as it considers appropriate. In consideration of the said fact, the Panel could have inferred that the Complainant’s allegations are true. The Panel has perused the informal email communication dated May 31, 2020, as exchanged between the Center and the Respondent and notes that while the Respondent did submit the said communication, no formal Response was filed by him subsequent to the reinstitution of the UDRP proceedings on July 5, 2020, within the period prescribed.

Under paragraph 10(d) of the Rules, the Panel is empowered to determine the admissibility, relevance, materiality and weight of the evidence. In pursuance of the general powers and responsibilities of the Panel set out in paragraph 10(b) of the Rules, that each party be treated equally and be given a fair opportunity to present its case, the Panel has reviewed and considered the above-mentioned email communication of the Respondent in the interest of completeness of record and to ensure procedural fairness between parties. See, AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830; Facebook Inc. v. Jeremy Williams, 3 Man Group, WIPO Case No. D2019-1535.

The Complainant under paragraph 4(a) of the Policy in order to succeed must satisfy the Panel on each of the following three elements by preponderance of evidence.

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 has no rights or legitimate interests in respect of the disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar:

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Further, a trademark registration provides a clear indication that the rights in the trademark belongs to the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1.

The Complainant has provided detailed evidence of its rights in the trademark NALLI on the basis of its multiple trademark registrations for the same in various jurisdictions around the world, including India. Specifically the Panel notes that the trademark registrations of the Complainant for the trademark NALLI dates back to 1987 (Registration No. 472754 dated May 27, 1987, in class 24) and 2000 (Registration No. 903811 dated February 16, 2000, in class 25) well before the Respondent registered the disputed domain name on February 27, 2020. Valid and subsisting trademark registrations constitute prima facie evidence of ownership, validity and the exclusive right to the use the said trademark in connection with the stated goods and services.

The disputed domain name <nallii.xyz> almost entirely incorporates and reproduces the Complainant’s trademark NALLI, the only difference being that the disputed domain name contains an additional letter “i”. It is this Panel’s view that this does not eliminate confusing similarity with the trademark of the Complainant since the disputed domain name remains visually, aurally and conceptually highly similar with the Complainant’s trademark. See, Skyscanner Limited v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2019-1951.

WIPO Overview 3.0, section 1.9, clearly sets out that a domain name, which consists of a common, obvious, or intentional misspelling of a trademark is to be considered by the Panels to be confusingly similar to the relevant mark for purposes of the first element outlined under Paragraph 4(a) of the Policy.

Previous UDRP decisions have consistently held that the introduction of small typographical changes or deliberate errors does not render Respondent’s domain name less confusingly similar to the core trademark held by the Complainant. See, Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259.

The Panel notes that misspelled or typosquatted domain names are intended to be confusing so that Internet users, who unwittingly make common typing errors, will enter the typosquatted domain name. See, National Association of Professional Baseball Leagues, Inc., d/b/a MinorLeague Baseball v. John Zuccarini, WIPO Case No. D2002-1011 and Zions Bancorporation v. Ryan G Foo,PPA Media Services / Domain Admin, WhoIs Privacy Corp, WIPO Case No. D2014-2278.

Lastly, the Panel notes that section 1.11 of the WIPO Overview 3.0, provides that generic Top-Level Domain (“gTLD”) indicators are a standard registration requirement and also are typically disregarded under the first element in the confusing similarity test. The Panel agrees with this view and considers the gTLD indicator ".xyz" to be irrelevant in the present case. See, Instagram, LLC v. Pawan Kumar, WIPO Case No. D2019-0293 and OSRAM GmbH v. PrivacyDotLink Customer 1429225 and PrivacyDotLink Customer 1429185 / Pijar Aji Pratama, WIPO Case No. D2016-2487.

Accordingly, the Panel concludes that the Complainant has proven the first element, that the disputed
domain name <nallii.xyz> is confusingly similar to the Complainant’s trademark NALLI, in which it has rights.

B. Rights or Legitimate Interests:

Paragraph 4(a)(ii) of the Policy requires the Complainant to show that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that the Complainant has already submitted evidence that it has exclusive rights in the NALLI trademark by virtue of subsisting statutory registrations in India and worldwide, all of which predate the registration of the disputed domain name on February 27, 2020.

Likewise, the evidence furnished by the Complainant as Annex 5 to the Complaint clearly illustrates that it is the registrant of a large number of domain names comprising of the trademark NALLI, the earliest of which goes back to 1998 (Annexure 4 to the Complainant, <nalli.com> registered on April, 28, 1998) which too precedes the registration of the disputed domain name by the Respondent. The Complainant has placed reliance on Annex 6, 7, and 10 and on a perusal of the same, the Panel is satisfied that the Complainant has common law rights in the trademark NALLI.

The Panel finds that the Complainant has made out a prima facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name, the burden of production on this element therefore shifts onto the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the said domain name. The Panel notes that the Respondent has failed to produce any countervailing evidence of any rights or legitimate interests in the disputed domain name and opines that the the Complainant can be deemed to have satisfied the second element under paragraph 4(a)(ii) of the Policy. See, Section 2.1 of the WIPO Overview 3.0 .

Although “nallii” could be a personal name, no such defence has been taken by the Respondent, who was duly notified of the Complaint and has chosen not to rebut it on the merits. The Panel also notes that according to the Registrar verification report, the Respondent is called “Manjukanth K” and is not commonly known by the name “nallii” for such a defence to be credible. The Panel observes that the Respondent deployed a service called WhoisGuard, Inc., which enabled it to register the disputed domain name by keeping its true identity a secret. The practice of using a proxy service to achieve registration of domain names creates a potential for abuse by cyber squatters and the natural inference to be drawn from such conduct is always a negative one. See, The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156.

The Respondent, in its email dated May 31, 2020, did not defend its rights over the domain or offer an explanation for its adoption and simply blamed the Registrar of the domain to the effect: “Namecheap only delivered this domain to me, so if any issues occurs for the domain <nallii.xyz>, i am not responsible and the namecheap.com is the responsible. Why should they sell this domain to me. I already requested to remove this domain. If you need this domain contact Namecheap.com not me.”

Consequently, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. See, Talk City, Inc. v Michael Robertson, WIPO Case No. D2000-0009.

The Panel notes that the Complainant has never licensed or otherwise authorized the Respondent to use its trademark NALLI or incorporate the same in any domain name. The Respondent has failed to assert any such right or legitimate interests in the disputed domain name.

Lastly the Panel on a perusal of Annex 2 of the Complaint holds that the Respondent has not made a bona fide offering of goods or services or a noncommercial use of the disputed domain name and has not demonstrated any effort to use the disputed domain name for legitimate purpose so as to confer it with a right or legitimate interest in the same in accordance with paragraph 4(c)(i) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith:

According to the Policy, bad faith is understood to occur where a Respondent takes unfair advantage of or otherwise abuses a Complainant’s mark (see section 3.1 of the WIPO Overview 3.0). The Panel notes that section 3.1.4 of the WIPO Overview 3.0 states that the mere registration of a domain name that is identical to a registered and widely known trademark, by an unaffiliated entity can itself create a presumption of bad faith.

Previous UDRP panels have consistently found that it ought to be presumed that the Respondent should have known / had constructive notice of the Complainant’s trademark if it is shown by the Complainant to be well-known or in wide use on the Internet or otherwise. Such knowledge of the Respondent is an indicator of bad faith on its part in having registered the disputed domain name. See, The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

In the backdrop of the Complainant’s extensive use, widespread business activities (online and offline) and numerous trademark registrations worldwide, coupled with the fact that the Respondent is apparently domiciled in Tamil Nadu, India, where the Complainant commenced its business and continues to be a household name, it is highly unlikely that the Respondent did not have knowledge of the Complainant’s rights in the trademark NALLI. A previous UDRP decision between the Complainant also had a Respondent from India M/s Nalli Chinnasami Chetty v. Nalli's Silks Sari Centre, WIPO Case No. D2020-0664.

In light of the said fact, the Panel concludes that at the time of registration of the disputed domain name <nallii.xyz> the Complainant’s rights in the trademark NALLI were well-known. The Panel notes that the nature of the disputed domain name (being a misspelling of the Complainant’s trademark NALLI by only one letter) could easily cause confusion and therefore this is a case of a deliberate typosquatting by the Respondent.

The Panel has perused Annex 2 of the Complaint and observes that the disputed domain resolves into a landing page which contains various references to <nallii.xyz> and features the following text namely “Nalli – Collection of Free Porn Videos” at the top and “Welcome to World Press. This is your first post. Edit or delete it, then start writing!” in the centre.

The Panel finds that the Respondent is effectively passively holding the disputed domain name and is not making any use of the same. Previous UDRP panels have ruled that the inactive of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Facebook, Inc. v. Juan Acosta, WIPO Case No. D2020-1101.

As has been noted above, the Complainant’s trademark NALLI is distinctive and well-known. It is clear that the Respondent was aware of and targeted the Complainant’s trademark when registering the disputed domain name. Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent, more so as a perusal of Annex 2 to the Complaint seems to suggest that the same was intended to be used for featuring pornographic material. The Panel finds that the Respondent’s conduct therefore smacks of opportunistic bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <nallii.xyz> be transferred to the Complainant.

Shwetasree Majumder
Sole Panelist
Date: August 9, 2020