WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rimjhim Hada v. Ajay Gupta, KPC International
Case No. D2021-0160
1. The Parties
The Complainant is Rimjhim Hada, India, represented by Singhania and Partners LLP, India.
The Respondent is Ajay Gupta, KPC International, India, represented by My Legal Partners, India.
2. The Domain Name and Registrar
The disputed domain name <aacho.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 January 20, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. On February 2, 2021, the Center received an email communication from the Respondent.
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 the Respondent of the Complaint, and the proceedings commenced on February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. On March 1, 2021, the Respondent requested an extension to the Response filing period. On March 2, 2021, the Response due date was extended until March 6, 2021, pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on March 5, 2021. On March 19, 2021, the Complainant filed an unsolicited supplemental filing with the Center.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on March 30, 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 claims to be in the business of clothing, footwear, and home décor products and retail services thereof in the name and style of Aachho Enterprises, under its mark AACHHO. The Complainant’s figurative mark AACHHO is registered in India since September 17, 2018, under registration number 397375. The Complainant also owns 11 domain names, namely <aachho.com>, <aachhoindia.com>, <achhoo.com>, <aachhojaipur.com>, <aachhojaipur.in>, <aacchhoo.com>, <aachhoo.com>, <aacchhoo.com>, <aachojaipur.com>, <aachojaipur.in>, <aachoojaipur.com>, and <aachoojaipur.in>. These domains incorporating the Complainant’s mark AACHHO and its misspellings redirect to Complainant’s website “www.aachho.com”. Complainant’s earliest domain name registration is for <aachho.com> registered on August 14, 2016.
The disputed domain name <aacho.com> has been registered on September 6, 2014. At the time of filing the complaint it is a parked page and no website is hosted on it. The Respondent has made the disputed domain available for sale.
Respondent claims to be in the business of designing, printing. and selling wedding cards and offering wedding solutions. The Respondent has filed Indian trade mark applications for its mark AACHO (word mark) on January 2, 2021 claiming use since September 6, 2014. On March 4, 2021 the Respondent filed trade mark cancellation actions against Complainant’s Indian trade mark registrations for the mark AACHHO. These proceedings are currently pending adjudication at the Indian Trade Marks Office.
5. Parties’ Contentions
The Complainant claims to have honestly adopted the mark AACHHO and registered the same as a figurative mark since September 17, 2018. The Complainant claims to be using its mark AACHHO in respect of clothing, footwear, and retail services thereof. The Complainant claims to have acquired goodwill and reputation for its mark AACHHO. In support of its claims of common law rights and goodwill under its mark AACHHO, the Complainant has submitted accounts statements and invoices (Annex 9), copies of distributor agreements (Annex 10), product listings on e-commerce websites (Annex 11), promotional expense invoice (Annex 12), extracts of its social media posts (Annex 13), and awards and certificates (Annex 14). Here, the Panel notes that none of these Annexes pre-date the year 2018.
In relation to paragraph 4(a)(i) of the Policy, the Complainant states that the disputed domain name is identical and confusingly similar to its mark AACHHO. According to the Complainant, the disputed domain name is identical to its mark entirely except for the omission of the letter “h” in the disputed domain.
Further, the Complainant has averred that the Respondent has no past or present use of the disputed domain name containing the Complainant’s mark and has no intention to use the same in future. The Complainant has submitted that it has built a prima facie case and has proved that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
The Complainant has averred that Complainant was quoted a price of USD 2,000,000 for the disputed domain name. According to the Complainant this shows that the disputed domain name was registered for unlawful and illicit commercial gains. The Respondent is attempting to monetize and re-sell the disputed domain name and has maliciously parked the same. The Complainant has argued such non-use and passive holding of the disputed domain name it constitutes bad faith on the Respondent’s part and has placed reliance on a past UDRP decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in support of its submission.
The Respondent has stated that the disputed domain name corresponds to its mark AACHO. Respondent claims to be the prior bona fide adopter and owner of the mark AACHO being adopted in 2013 and used commercially since 2014. The Respondent claims that the disputed domain name was purchased by the Respondent to carry his business under its mark AACHO. The Respondent argues that the Complainant has subsequently adopted the mark AACHHO in 2018 which is deceptively similar to the Respondent’s mark AACHO being used commercially since 2014. The present Complaint is an attempt by the Complainant to usurp the Respondent’s legitimately owned domain name.
The disputed domain name was registered in the year 2014 whereas the Complainant’s domain name <aachho.com> was registered in the year 2016. The Respondent argues that the Complainant cannot complain against the disputed domain name which was registered even before Complainant’s business came into existence. The Respondent has accused the Complainant of false, misleading and meritless statements. The Respondent states that it has never offered to sell or otherwise transfer the disputed domain name to the Complainant.
As proof of adoption of its trade mark AACHO, the Respondent has filed a letter (Annex R2 to the Response) dated November 18, 2013 from the designer who designed its AACHO logo. The Respondent also claims to have gained recognition as a niche wedding planner of theme based wedding solutions under the trade mark AACHO since 2014. Annex R4 to the Response is a catalogue for the Respondent’s commercial offerings under the trade mark AACHO which pertains to the year 2016.
The Respondent has argued that he was working on the development and content of the website on the disputed domain name when he received the notification of the present complaint. The Respondent bought the disputed domain name since he was planning to establish his presence over the Internet. In relation to the Complainants’ allegation concerning the offer for sale of the disputed domain names, the Respondent submits that it is entitled to maintain and/or dispose of its legitimately acquired business assets on whatever commercial terms it sees fit since it has legitimate rights in the disputed domain name and trade mark AACHO, by virtue of its commercial use since 2014.
6. Discussion and Findings
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 as have been 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 notes that the Complainant, when submitting its unsolicited supplemental filing, should have clearly shown its relevance to the case and why it was unable to provide the information contained therein in the Complaint. The Panel finds no indication that there are exceptional circumstances, new developments, arguments or evidence that were not available to Complainant before the Complainant’s supplemental filing. The Panel nevertheless has reviewed and considered the Complainant’s Supplemental Filing of March 19, 2021 in the interest of completeness of record. The Panel notes that there was no need to invite a reaction from the Respondent. See X for convening and Managing Athletic Events v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Ebrahim Alsaidi, WIPO Case No. D2016-0013.
Under paragraph 4(a) of the Policy, the Complainant must prove, each of the following three elements required under by a 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.
The Complainant has relied on figurative trademark registrations for AACHHO registered in India since 2018. As stated in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. Moreover, as highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity 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.
The Panel notes that the Complainant does not have a word mark registration for its mark AACHHO. However, WIPO Overview 3.0, section 1.10 stipulates that design (or figurative/stylized) elements would be incapable of representation in domain names and as such these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity.
In the case at hand, the trademark AACHHO is entirely reproduced in the disputed domain name <aacho.com>, with the mere omission of the letter “h”. WIPO Overview 3.0, section 1.9 stipulates that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first requirement as the domain name contains sufficiently recognizable aspects of the relevant mark.
The Panel notes that section 1.11 of the WIPO Overview 3.0, further provides that generic Top-Level Domains (e.g., “.com”, “.info”, “.net”, “.org”) are a standard registration requirement and have to be disregarded under the first element in the confusing similarity test. See, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
In view of the above-mentioned findings, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark and that the requirement of paragraph 4(a)(i) of the Policy stands satisfied.
B. Rights or Legitimate Interests
The Complainant must prima facie show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As with each Policy element, the ultimate burden of proof rests on the Complainant.
The Complainant’s registered rights and unregistered or common law rights in the mark AACHHO are clearly subsequent to the registration of the disputed domain name. The disputed domain name has been registered in the year 2014, whereas Complainant’s Indian trade mark registrations for AACHHO date to 2018. It is neither the Complainant’s case that it used the trade mark AACHHO prior to 2018, nor does the evidence filed by the Complainant in support of its common law rights prove use of its trade mark AACHHO prior to the Respondent’s registration of the disputed domain name. The Complainant’s firm Aachho Enterprises which the Complainant purports to trade under, was established only in the year 2019 as seen from Annex 1 of the Complaint. The Complainant’s domain name <aachho.com> registered in the year 2016 is also subsequent to the registration of the disputed domain name. A perusal of Annex 7 reveals that the Complainant filed the Indian trade mark applications for its AACHHO trade marks on September 17, 2018 on an intent to use basis. Hence, even as on September 17, 2018 the Complainant was yet to use the trade mark AACHHO and thus lacked any unregistered/common law rights in the same. Hence, the disputed domain name was registered long before the Complainant acquired any alleged trade mark rights in AACHHO. The Complainant has not made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain.
The Respondent has rebutted the Complainant’s contentions, highlighting that it has been using its mark AACHO in connection with a bona fide offering of goods or services before the filing and use of the Complainant trademark AACHHO. The Respondent claims to have adopted its mark AACHO in 2013 and used the same since 2014. The Respondent has also submitted, as Annexes R2, R3, and R4 to the Response, pre-Complaint evidence of use of its mark AACHO in connection with its goods and services. The Panel finds that the documents provided qualify as evidence of genuine use and are a credible sign of the pursuit of the Respondent’s business.
In view of the above, contrary to the Complainant’s cybersquatting allegations against the Respondent, the Panel notes that the Respondent has instead shown demonstrable use or preparations to use a name corresponding to the domain name in connection with a bona fide offering of goods or services (see section 2.2 of the WIPO Overview 3.0).
The initiation of cancellation proceedings before the Indian Trademark Registry by the Respondent against the Complainant’s trade mark registration for the figurative mark AACHHO is also in furtherance of the Respondent’s efforts to establish its rights over the trade mark AACHO.
Therefore, the Panel concludes that the Complainant has failed to prima facie demonstrate that the Respondent has no rights and legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy and that, on the other hand, the Respondent has put forward a satisfactory argument under paragraph 4(c)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and are being used by the Respondent in bad faith.
As highlighted above, the disputed domain name was registered in 2014, years before the Complainant’s filing of the trade mark applications for AACHHO in India (in 2018) and the registration of the Complainant’s domain name containing AACHHO (in 2016). Furthermore, based on the records, no evidence has been submitted to demonstrate that the Complainant acquired common law rights in its mark AACHHO before the disputed domain name was registered in 2014. The disputed domain name was registered before the Complainant acquired any rights in its mark AACHHO.
In addition to the above, the Complainant did not provide any evidence to show that the disputed domain was ever used to target the Complainant or its business. It does not appear from the circumstances of the present case that the disputed domain name was registered in anticipation of trade mark rights by the Complainant. In such a scenario, registration of the disputed domain and/or its use cannot be held to be in bad faith (section 3.8.1 of the WIPO Overview 3.0).
The Complainant’s assertion that the disputed domain name is registered in bad faith, is essentially based only on the fact that Respondent is today offering the disputed domain name for sale. The Panel finds that the Complainant’s statement “upon seeking the price for purchasing the disputed domain name the Complainant was quoted a price of USD 2,000,000” may be misleading. Annex 3 filed in support of this statement fails to prove that the Respondent quoted this price or offered to sell the disputed domain name to the Complainant. Annex 3 is an extract from the Registrar’s website, where the disputed domain name is simply shown to be available for sale. The Respondent has denied offering the disputed domain name for sale to the Complainant. There is no element from which the Panel could infer that the Respondent registered the disputed domain name with the intention to sell it to the Complainant or trade off its trademark rights. Previous Panels have found that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP (section 2.1 of the WIPO Overview 3.0).
The general powers of a panel articulated, inter alia, in paragraphs 10 and 12 of the UDRP Rules, provide for a panel to undertake limited factual research into matters of public record, if it would consider such information useful to assessing the case merits and reaching a decision (section 4.8 of the WIPO Overview 3.0). Perusal of the Complainant’s website “www.aachho.com” revealed to the Panel that the word aachho means “good” in Rajasthani – a regional language in India.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered or used the disputed domain in bad faith according to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the complaint is denied.
Date: April 14, 2021