WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M/s. Innvectra Softech Private Limited v. WhoisGuard Protected of WhoisGuard, Inc. / Ravindrababu MV, Innvectra Info Solutions Pvt. Ltd.
Case No. D2020-2480
1. The Parties
The Complainant is M/s. Innvectra Softech Private Limited, India, represented by L. R. SWAMI CO., India.
The Respondent is WhoisGuard Protected of WhoisGuard, Inc., Panama / Ravindrababu MV, Innvectra Info Solutions Pvt. Ltd., India, represented by Anand & Anand, India.
2. The Domain Name and Registrar
The disputed domain name <innvectra.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2020, the Registrar transmitted by email to the Center its verification 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 September 28, 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 September 29, 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 October 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2020. The Response was filed with the Center on October 20, 2020.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 27, 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. Additional unsolicited submissions were made by the parties on October 28, 2020, and on October 29, 2020.
4. Factual Background
The Complainant Innvectra Softech Pvt. Ltd. is an Information Technology (IT) services company that was incorporated in 2010. The Complainant has registered trademarks for the INNVECTRA mark.
The Respondents are, Innvectra Info Solutions Pvt Ltd., a company that was incorporated in 2007 and is referred to in these proceedings as “The Respondent company” and Mr. Venkata Ravindra Babu Mannam or Ravindrababu MV, is referred to as “the Respondent” in these proceedings. The Respondent registered the disputed domain name in 2003.
The parties entered into a business arrangement in 2008 and the Respondent was the Managing Director (MD) of the Complainant company from 2010 to 2017. The disputed domain name was used by the Complainant company. Due to differences, the parties parted ways, but both claim rights in the INNVECTRA mark and the disputed domain name. The Complainant sent a cease and desist notice to the Respondent dated January 8, 2020. The Respondent sent a reply to the notice, dated January 31, 2020. Other notices, replies and rejoinders were exchanged between the parties.
The parties have filed several trademark disputes against each other. The details of the oppositions and rectification petitions that are pending before the Indian Trademark Office are:
1. Trademark oppositions was filed by the Complainant against the Respondent’s application 3558859 in class 42, (application is presently abandoned);
2. The Complainant has filed letters of objection against the Respondent’s trademark application number 4417489 under class 42, trademark application 4417495 under class 42 and trademark application 4417491 under class 9 and an opposition against application number 4417502 under class 9; and
3. The Respondent has filed trademark rectification proceedings on February 4, 2020, against the Complainant’s trademark registration seeking removal or cancellation of the Complainant’s registered marks registered trademark number 3570003 in class 9 and registered trademark number 3570003 in class 42.
The Respondent has filed a civil proceeding A 2419 of 2020 in CS D No.69754 of 2020, before the Hon’ble High Court of Madras.
5. Parties’ Contentions
The Complainant contends that it is the registered proprietor, the sole exclusive owner and user of the INNVECTRA mark which it adopted in the year 2010. The Complainant states the trademark and the disputed domain name have been used by it extensively since 2010, and the mark is an essential part of its house mark and its trade name. The Complainant states the mark has acquired goodwill and reputation and as evidence has filed audit certified figures of its revenue growth and audit certified figures for its marketing and business development expenditure.
The Complainant states that M/s Ayantek LLC, its related company based in the United States of America (“United States”), had advertised for acquisition of controlling shares in a software company. The Respondent company responded to the said advertisement in 2007, within eight months of its formation. The Complainant states that during the period 2008 to 2009, the only significant order executed by the Respondent was a trial order from M/s Ayantek LLC to assess the Respondent’s ability to source high quality resources of different software specializations from India.
The Complainant states M/s Ayentek LLC made a proposal for a controlling interest in Respondent company, but it did not go ahead due to uncleared liabilities of the Respondent. The Complainant claims that the Respondent did not have any name or reputation, business value, any product or service under the INNVECTRA mark from the time it was formed, and the Respondent’s sole client was M/s Ayantek LLC.
The Complainant states it was incorporated when the Respondent and M/s Ayantek LLC decided to form a new company. The Respondent became the full time Managing Director of the Complainant in February 2010. The majority shareholding in the Complainant was held by Mr. K. Ramanathan, a partner of M/s Ayantek LLC. The Complainant states the Respondent choose the name of the Complainant company, which functioned as an outsourcing facility for M/s Ayantek LLC.
The Complainant alleges the Respondent transferred the disputed domain name and website unconditionally and unsolicited to the Complainant. In 2011, the Respondent reduced his shareholding in the Complainant to ten percent and Mr. Ramanathan, family and friends held the remaining ninety percent. The Complainant claims that the Respondent showed willingness to give away controlling interest in the Respondent Company and transfer the trade name “Innvectra” to the Complainant. The Complainant alleges that the “no objection certificate” was given by the Respondent, as he apparently did not consider the trade name to have “any commercial attribution”.
The Complainant alleges that its growth and development was due to its association with M/s Ayantek LLC. On the website of M/s Ayantek LLC, the Respondent was mentioned as Managing Director of the Complainant and General Manager of its India operations. The Complainant adds that “Innvectra” is known as the “Indian Arm” of M/s Ayantek LLC’s United States clients, and any unauthorized use or misuse of the mark is likely affect the reputation of M/s Ayantek LLC.
The Complainant alleges that the Respondent stopped using the INNVECTRA mark and no worthwhile business was done by Respondent after forming the Complainant in 2010. The Complainant argues that although the Respondent was a prior adopter of the mark, his claim to the mark lapsed, which it was subsumed by Complainant in 2010 and the disputed domain name was transferred to the Complainant. The Complainant alleges that there was an implicit understanding between the parties the Respondent would cease using the mark and the disputed domain name after forming the Complainant.
The Complainant states that if the Respondent had used the mark after 2010, it was unauthorized, as the Respondent company had indicated that it would be merged with the Complainant, after clearing liabilities or it will be struck off, as required by law. The Complainant states that the Respondent company was covertly operated by its promoters and kept active. The Complainant alleges that payment for the disputed domain name and the email were borne by the Complainant from 2010 to 2017, and the disputed domain name was exclusively used by the Complainant.
The Complainant contends that disputes arose between the parties due to wrongful use of the disputed domain name, and diversion of United States clients to the Respondent. The Complainant states the Respondent applied for trademark registration although he has surrendered all rights in the mark and the disputed domain name. The Complainant alleges that the Respondent has hijacked the disputed domain name to derive mileage from the goodwill and the traffic associated with the INNVECTRA mark, and has made changes to the website. The Complainant has requested for transfer of the disputed domain name based on the three elements of the Policy.
The Respondent has refuted the Complainant’s claims and has alleged that the INNVECTRA mark was honestly adopted when the disputed domain name was registered on December 2, 2003. The Respondent adds that “Innvectra” is part the Respondent company name that was incorporated on August 3, 2007. The Respondent alleges that the mark has been used for seventeen years in relation to its business in the area of Information Technology and allied services and has submitted evidence of use of the mark prior to creation of the Complainant. The Respondent claims that the disputed domain name was used from 2003 to 2007 for business and in 2008 when it entered into a business proposal to jointly set up a new company, and when it entered into a Memorandum of Understanding dated August 12, 2009.
The Respondent states that, as “Innvectra” was to be part of the name for the new entity, to overcome objections from the authorities, a “no objection” letter dated December 17, 2009, was provided by the Respondent. Thereby permission was given for use of “Innvectra” in the Complainant’s name, the Respondent asserts that no rights were transferred to the Complainant. The Complainant started its operations in February 2010 and the Respondent states he was the Managing Director and Mr. K. Ramanathan was the Chairman. The Complainant entered into a business development agreement with Ayantek LLC and the Respondent indicates that it was agreed by the parties, that work would be sub-contracted to the Respondent.
In May 2017, the Respondent states he tendered his resignation due to management issues. The Respondent states he filed an Indian trademark application for the INNVECTRA mark, application number 355889, in class 42, that was opposed by the Complainant in 2017. The Respondent alleges the trademark application status is “abandoned”, as the parties were in settlement talks at that time.
The Respondent states that it was decided by the parties in October 2017, that the Complainant company would be voluntarily dissolved, but the Complainant continued to use the mark and obtained a trademark registration on June 13, 2017. The Respondent states this is fourteen years after the disputed domain name was registered, ten years after incorporation of the Respondent Company and eight years after the Respondent gave a “no objection” to the Complainant.
The Respondent states a settlement agreement was entered into between the parties on July 21, 2018, and among the terms of the settlement, it was agreed that
i) the Respondent is entitled to use INNVECTRA and the goodwill;
ii) the Respondent is entitled to register the trademark INNVECTRA, and it is to be considered an assignment of the mark, and the consideration is the settlement;
iii) the Complainant is to withdraw all trademark applications and registrations in its name;
iv) the Complainant agreed not to file objections against any trademarks filed by the Respondent; and
v) the Respondent entitles to receive 40 lakhs INR (USD 58,000) from the Complainant towards reserves, dividends, and capital gains. The Respondent states the amount mentioned was not paid, and the Complainant’s claims over the mark is void on the basis of this settlement.
The Respondent further alleges that the Mr K. Ramanathan made him sign unnecessary and illegal agreements with M/s Ayantek LLC. This resulted in losses to the Complainant and the Respondent, but Mr. K. Ramanathan and family profited unjustly. The Respondent has made other allegations such as fraud, diversion of funds to Anaqua Inc. and M/s Ayantek LLC, being deceived to transfer thirty nine percent of shares in Complainant company without consideration, mismanagement and oppression, financial misrepresentation to income tax authorities, blocking of other domain names <innvectra.co.in> and <innvectra.net.in> by Upayan Tech Software Private Ltd., where Mr. K. Ramnathan is a director, use of office, payments for other domain names being shown as payments for the disputed domain name, and the Complainant trying to usurp the INNVECTRA mark.
The Respondent has requested:
(i) that the Complaint be dismissed;
(ii) that the Respondent is declared the true owner of the disputed domain name; and
(iii) that the Complaint is found to be filed in bad faith and abuse of the Policy, in an attempt to Reverse Domain Name Hijack its domain name.
C. Additional Submissions by the Parties
The Panel in its discretion has not allowed the additional submissions made by the parties. As discussed in the following sections, this dispute is basically a business dispute between the parties.
6. Discussion and Findings
Given these facts, and due to lack of written documents showing assignment of the mark, each party to the dispute has given divergent interpretations of their business arrangement, in a bid to claim rights in the INNVECTRA mark. The Complainant on its part has alleged that after its formation, the Respondent transferred the disputed domain name and website unconditionally and unsolicited to the Complainant. In the words of the Complainant:
“Even though the Respondent was the prior adopter of the INNVECTRA mark, its claim in the INNVECTRA mark lapsed as it was subsumed by the Complainant in 2010 […] the use if any of the INNVECTRA mark by the Respondent after 2010 was unauthorized, illicit and void ab initio as the implicit understanding between the Respondent and the Complainant was the former would cease the use of the INNVECTRA mark and the domain name <innvectra.com> after formation of the Complainant.”
The Complainant has not filed any document or evidence showing that it has acquired the mark though a written agreement or an assignment of the mark and the disputed domain name. It appears from the parties’ submissions, that they entered into an undocumented arrangement for the use of the mark and the disputed domain name, and in the words of the Complainant, it is admitted that there was merely an “implicit understanding” between the parties.
The main arguments made by the Complainant to support its alleged rights in the mark are:
i) the Respondent has given up rights in the mark and the disputed domain name, and ought to have ceased using the mark after incorporation of the Complainant in 2010;
ii) the Respondent had no significant business prior to its collaboration with M/s Ayantek LLC;
iii) a major share of the Complainant’s business was provided by M/s Ayantek LLC which has resulted in building the rights, goodwill, and reputation of the INNVECTRA mark;
iv) there was no use of the mark by the Respondent from 2010 to 2017 and the Respondent’s rights ought to have lapsed due to non-use of the mark; and
iv) even if there was use of the mark by the Respondent or the Respondent Company after formation of the Complainant, it was not authorized use of the mark and disputed domain name, under the implicit understanding between the parties.
The Respondent on his part has claimed that he has registered the disputed domain name in 2003. No rights were transferred, and the Complainant was only permitted use of the mark as part of the company name. There is no dispute between the parties that the Respondent is the prior adopter of the mark. The Respondent has filed evidence that the mark has been used by the Respondent in commerce from 2003 to 2007, prior to the business arrangement with the Complainant.
Whether the Complainant acquired rights in the mark, based on its use of the mark in commerce from 2010 to 2017, to the exclusion of the Respondent, as per the “implicit understanding” between the parties, is an issue that cannot be gauged or determined in this forum. The determination of rights in the mark, under the circumstances of the present case, would require ascertaining first and foremost the intention of the parties, and also their respective contribution to business, the goodwill and reputation of the mark prior to the parties business arrangement, and the goodwill and reputation of the mark that was built during the time they had done business together. These and other related questions and issues, are beyond the scope of these proceedings. What transpired, and the real intent of the parties requires a complex finding of fact that needs to be resolved by a court of competent jurisdiction, to determine the rights of the parties in the said mark and the disputed domain name. The UDRP does not provide a forum for parties to resolve business disputes of a complex nature such as the present one, even if the dispute concerns the use of a disputed domain name.
The Panel now proceeds to make a finding based on the submissions made by the parties. Under the Policy, paragraph 4 (a), the Complainant it required to establish three elements to obtain the remedy of transfer of the disputed domain name, these are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The disputed domain name reproduces the INNVECTRA trademark. The Complainant has submitted evidence of its registered trademarks for the INNVECTRA mark, against which there are pending rectification petitions filed by the Respondent. As discussed in the previous sections, the question of Complainant’s rights and ownership in the mark are subject to the outcome in the ongoing pending trademark disputes between the parties.
The Panel makes no decisive finding on the first requirement, due to the very unusual situation and circumstances in this specific case, and also that the Complainant has not fulfilled the requirements under the second and third elements under paragraph 4(a).
B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, the Complainant needs to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has contended that the Respondent had not made significant use of the mark or the disputed domain name in connection with business or built any reputation prior to the business arrangement between the parties in 2008. The Respondent has rebutted this and stated that the disputed domain name and the mark have been used in commerce for the said period with evidence.
As to the use of the mark by the Complainant for the period 2010 to 2017, and the rights of each party due to the use during this period raises very complex questions and issues relating to the business arrangements between the parties. As observed in the previous section, given the complexities arising from the business dispute between the parties, the issue of resolving the parties rights ought to be determined by a court of competent jurisdiction. The Policy is not a meant for resolving business disputes.
C. Registered and Used in Bad Faith
The parties are in agreement that the Respondent has registered the disputed domain name in 2003, and the Respondent was the first to adopt the mark. This establishes that the Complainant’s mark was not targeted by Respondent at the time the disputed domain name was registered. The Complaint fails on the ground that the Complainant has not established that the disputed domain was registered in bad faith. The question use turns on the complex issues outlined above.
D. Reverse Domain Name Hijacking.
The Respondent has requested a finding that the Complainant has been brought in bad faith in an attempt to reverse domain name hijack (RDHN). To establish reverse domain name hijacking, the Respondent has to clearly show the Complainant’s lack of rights or bad faith towards the Respondent. As discussed, the issue of rights in the mark is yet to be determined, and the Panel finds that RDHN, has not been established by the Respondent. The Respondent’s request to find RDNH is denied.
For the foregoing reasons, the Complaint is denied.
Date: November 10, 2020