WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nalli Chinnasami Chetty v. Nallii Bluesoft
Case No. D2020-3123
1. The Parties
The Complainant is Nalli Chinnasami Chetty, India, represented by De Penning & De Penning, India.
The Respondent is Nallii Bluesoft, India.
2. The Domain Name and Registrar
The disputed domain name <nallii.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 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 November 23, 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 November 24, 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 December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2021.
The Center appointed Maninder Singh as the sole panelist in this matter on February 1, 2021. 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 established in the year 1928. Mr. Nalli Kuppuswami Chetty and Mr. Ramnath K. Nalli also known as N. K. Ramanathan are the partners of the said firm. Mr. Nalli Kuppuswami Chetty is the father of Mr. Ramnath K. Nalli. The Complainant is carrying on a well-established business of manufacturing and marketing various goods such as clothing and readymade garments, fashion accessories, textile goods, etc., under the trade mark NALLI. The Complainant claims to be the original proprietor of the trade mark NALLI and claims the usage of the trade mark NALLI since 1935. The Complainant also provides evidence of having registered the trade mark NALLI in several countries including India, for example Indian trademark No. 472754 NALLI, registered on February 15, 1993. The Complainant is also the proprietor of the mark NALLI with its variants.
The Respondent is Nallii Bluesoft, India. The Respondent registered the disputed domain name on January 21, 2020. According to evidence provided by the Complainant, the disputed domain name resolves to a parking page displaying pay-per-click (“PPC”) links.
5. Parties’ Contentions
A. The Complainant
The Complainant claims to be a leading manufacturer and merchant dealing in clothes through their various showrooms all over the world. The Complainant claims that with around 90 years of business in Chennai and several years of business in other parts of not only India, but the world over, the Complainant combines global expertise and operations with local knowledge in the market. The Complainant, being a pioneer in large scale retailing, claims to enjoy immense admiration and popularity amongst the general public and trade. The Complainant claims to be the first adopter and the original proprietor of the trade mark NALLI.
The Complainant is also doing business through their website “www.nalli.com”. The said domain name was registered on April 28, 1998 and the website was also launched in the same year. The Complainant claims that this domain name is widely being accessed by the general public and has gained popularity in respect of the goods and services internationally, including India. The said website gives varied information on the Complainant’s goods and services to the existing and prospective customers. Further, the said website offers online sales of the Complainant’s goods under the trade mark NALLI to facilitate the purchase of goods from any part of the world. The Complainant claims to have sales of 12 Crores (INR) in the year 2018-2019 by way of online sales only through their above mentioned website. The Complainant also has a back office of about 70 technical people working on above-stated website “www.nalli.com”. The Complainant also claims to have numerous other domain name registrations, a list whereof is annexed with the Complaint.
The Complainant claims that by virtue of long, continuous and extensive use of the mark NALLI for about nine decades, a huge impact has been created in the minds of the consumers in India and other jurisdictions. The Complainant states that the trade mark NALLI has developed a loyal customer base, which is associated with the service levels of the Complainant and the high quality goods emanating therefrom.
The Complainant further states that enormous amount has been spent in popularizing the trade mark NALLI by way of advertisement campaigns in various media including website, radio, T.V., magazines, newspapers, pamphlets, brochures, hoardings, banners, diaries, card boards, etc. The Complainant claims that considerable time, money and concerted efforts have been expended in building the brand value associated with the trade mark NALLI. The Complainant claims that by way of such long, continuous and extensive use, the Complainant has become the exclusive proprietor of the said well-known trade mark in India and several countries and that due to the superior and high quality of a wide range of goods, the said trade mark NALLI has gained dedicated customers of all age groups in India and abroad.
The Complainant states that its trade/service mark NALLI has acquired distinctiveness and is a well-known trade/service mark, associated exclusively with the Complainant and its business. The Complainant further states that by virtue of priority in adoption, long, continuous, uninterrupted and extensive usage of the mark NALLI since 1928, the Complainant has acquired substantive common law rights to use the NALLI mark.
The Complainant states that the mark NALLI has been uniquely adopted in relation of the business of the Complainant and on account of its unique adoption, distinctiveness, use, the mark NALLI has become exclusively and solely associated with the Complainant.
The Complainant also sought statutory protection of their trade mark NALLI by filing trade mark applications in the classes 24 and 25 and has obtained the necessary registration. Copies of trademark registration certificates and extracts from the online records of the Trade Marks Registry are annexed with the Complaint. The Complainant has also obtained statutory protection for its mark NALLI in other jurisdictions. The Complainant’s registration details in foreign countries have been tabulated in its complaint and copies of relevant extracts from the United States Patent and Trademark Office (“USPTO”) and European Union Intellectual Property Office (“EUIPO”) are also annexed with the Complaint.
The Complainant contends that the grant of the aforementioned trademark registrations in favour of the Complainant for the trademark NALLI is in itself adequate recognition of the Complainant’s proprietary rights in the trademark NALLI.
The Complainant claims to devoted enormous amount of time, effort and energy in promoting and advertising the said mark in the print and online media and the said mark is consequently identified solely with the Complainant. The Complainant is also the registrant of numerous domain names containing its trade/service mark NALLI.
The Complainant claims that its rights in the trade mark/name NALLI have been recognized in a previous UDRP decisions also being M/s. Nalli Chinnasami Chetty v. Nalli’s Silks Sari Centre, WIPO Case No. D2009-0664, wherein the domain name <nallis.com> was transferred to the Complainant.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights:
The Complainant contends that the disputed domain name is identical to the well-known trade/service mark of the Complainant, NALLI by any yardsticks of comparison be it aural, visual and structural. The Complainant contends that it has overwhelming common law as well as statutory rights in its trade/service mark NALLI in India and foreign jurisdictions. Therefore, the Complainant is the sole legitimate owner of the trade/service mark NALLI.
The Complainant further contends that the Respondent’s use of the word “nallii” in the disputed domain name 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 Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
- 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 or any trade/service mark similar to it.
- The Respondent has not made any legitimate offering of goods or services under the mark NALLI through the disputed domain name.
- There could be no plausible explanation for the registration of the disputed domain name by the Respondent other than to misappropriate the reputation of the Complainant’s trade/service mark.
- In view of the close similarity between the disputed domain name and the Complainant’s trade/service mark NALLI, the Complainant has a strong reason to believe that the purpose of the Respondent’s registration of the disputed domain name is to misappropriate the reputation of the Complainant’s trade/service mark.
The disputed domain name was registered and is being used in bad faith:
The Complainant contends that the Respondent has registered the disputed domain name in bad faith for the following reasons:
- Since the Complainant’s trade/service mark NALLI has well spread reputation and goodwill and has registrations in India and foreign jurisdictions, the Respondent ought to have had constructive notice of the Complainant’s rights in the trade/service mark NALLI. Reliance in this regard has been placed on the UDRP decisions in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
- In view of the extensive reputation and goodwill of the Complainant’s mark NALLI, the Respondent would definitely be aware of the Complainant’s trade/service mark.
- The Respondent has not made any legitimate offering of goods or services through the disputed domain name. Hence, the Respondent is only attempting to usurp the reputation and goodwill of the Complainant’s trade/service mark NALLI through the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has furnished evidence of its rights in the trademark NALLI, through its above-referred trademark registrations and common law rights, which have accrued to it through its long and substantial use of the mark. The Panel has also gone through the earlier decision in M/s. Nalli Chinnasami Chetty Vs Nalli’s Silks Sari Centre, supra – upon which reliance has been placed by the Complainant.
The Panel finds that the disputed domain name <nallii.com> by reproducing the Complainant’s trademarks NALLI by adding a single letter “i” is an obvious misspelling of the Complainant’s trademarks and cannot avoid a finding of confusing similarity.
The Panel finds it useful to refer, in this regard, to certain prior decisions under the Policy.
(i) In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, it has been held that the elimination of the letter “s” between “guinnes” and “Guinness” does not significantly affect the visual impression made by domain name as compared with the mark and does not affect the pronunciation of the domain name as compared with the mark.
(ii) In America Online Inc., v. Yeteck Communications Inc., WIPO Case No. D2001-0055, it was held that precedent clearly supports the principle that the adaptation of a recognized trademark in a domain name by variation in spelling or by the deletion, addition or insertion of letters, words or acronyms does not escape a finding of confusing similarity.
The Panel finds that the Complainant has therefore succeeded in establishing the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a case proving its rights in the trademarks NALLI. The Complainant enjoys goodwill and reputation for the mark/name registered by it. The Panel has no doubt that the disputed domain name incorporates the well known and famous trademark NALLI of the Complainant.
The Panel observes, based on the record, that the Respondent is in no way affiliated with Complainant in any way nor has he been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The Panel has further observed that registration of the Complainant’s trademarks preceded the registration of the disputed domain name with decades.
The Panel also observes and agrees with the Complainant’s contention that the Respondent has not made any legitimate offering of goods or services under the mark NALLI through the disputed domain name.
The Panel in this regard relies upon the decision in Drexel University v. David Brouda, WIPO Case No. D2001-0067 holding that rights or legitimate interests cannot be created where the user of the disputed domain name at issue would not choose such a name unless he was seeking to create an impression of association with the complainant.
In the facts and circumstances of the present case, the Panel has no difficulty in coming to the conclusion that the Respondent has nothing to prove its bona fide use of the disputed domain name as it has failed to submit any response to the contentions made by the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant’s submissions that domain names are fast emerging corporate assets and have evolved as a fulcrum of a company’s visibility and marketing operations and it becomes critical that unscrupulous individuals are not allowed to usurp well-known trademarks and domain names to unfairly benefit from such act.
The Panel observes that the trademark/name of the Complainant NALLI is well known not only in India but also in various parts of the world and there is every likelihood of Internet users of the disputed domain name of Respondent believing that there is some connection, affiliation or association between the Complainant and the Respondent thereby creating undue gains for the Respondent and further having the effect of damaging the goodwill, reputation and business interests of the Complainant.
The Panel observes that the disputed domain name was registered by the Respondent only on January 21, 2020. The Panel has no hesitation in holding that being fully aware of the commercial value and significance of the Complainant’s trademark/name NALLI and incorporation thereof in a domain name, the Respondent has registered the disputed domain name to take commercial advantage of it by riding over the substantial goodwill and reputation of the Complainant in its trademark.
The Panel observes that the disputed domain name has been registered by the Respondent subsequent to the Complainant’s relevant trademark and domain name registrations and is being used in bad faith. In this regard the Panel would also like to refer to the following observations made in
(i) Consitex S.A. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. DWS2003-0001 – holding that a respondent could not ignore the existence of a well-known trademark at the time of registering a domain name; and
(ii) Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 – holding that when a domain name is so obviously connected with a complainant, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”.
The Panel also observes that the Respondent has not submitted any rebuttal of the Complainant’s contentions.
The Panel, therefore, finds that the disputed domain name was registered and being used in bad faith by the Respondent.
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.com> be transferred to the Complainant.
Date: February 15, 2021