WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nalli Chinnasami Chetty v. Contact Privacy INC, Customer 0161413345 / Leina Zouitene

Case No. D2021-1830

1. The Parties

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

The Respondent is Contact Privacy INC, Customer 0161413345, Canada / Leina Zouitene, France.

2. The Domain Name and Registrar

The disputed domain name <nali.life> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2021, 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 June 11, 2021 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 amendment to the Complaint on June 15, 2021.

The Center verified that the Complaint together with the amendment to 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 June 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2021.

The Center appointed John Swinson as the sole panelist in this matter on July 28, 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 is an Indian partnership firm that manufactures and markets clothing and fashion accessories. The Complainant is well-known for its pure silks and traditional sarees.

The Complainant was established in 1928.

The Complainant has used the NALLI trademark on its goods since 1935. The Complainant owns long-stranding registered trademarks for NALLI in several countries, including India, the United States, Australia, Canada and the United Kingdom; such as United States of America trademark registration 2444608, registered on April 17, 2001 and an European Union trademark registration 005690839, registered on February 6, 2008.

The Complainant’s website is located at “www.nalli.com”.

The Respondent did not file a Response, so little is known about the Respondent. The Registrar provided a French address for the Respondent.

The disputed domain name was registered on April 15, 2021.

The website at the disputed domain name currently resolves to a shopping website for a skin product, namely a body scrub. That product is branded NALI. There is a Beverley Hills address (which seems to correspond to a UPS Store address) and telephone number provided on the website. The online shopping functionality appears to be under-development. When trying to purchase a product, the following message appears: “Checkout is closed This store isn’t set up to process payments”.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions:

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 trademark NALLI. The Complainant is the original proprietor of the trademark NALLI which has been used on the Complainant’s products since 1935.

The Complainant is a global business.

The Complainant has had an online presence since 1998, which is an important sales channel for the Complainant. The Complainant has an extensive advertising campaign. The NALLI trademark is well-known and is exclusively associated with the Complainant.

The Complainant has registered trademarks for NALLI in a number of jurisdictions.

The Complainant referred to M/s Nalli Chinnasami Chetty v. Nalli’s Silks Sari Centre, WIPO Case No. D2009-0664, in which the Complainant was successful in respect of the domain name <nallis.com>.

The disputed domain name is identical to the Complainant’s NALLI trademark.

The Respondent’s use of the disputed domain name is bound to induce the public into believing that the Respondent has a connection with the Complainant, which it does not.

The Complainant has not licensed the Respondent to use the NALLI trademark.

There could be no plausible explanation for the registration of the disputed domain name, other than to misappropriate the reputation of the Complainant’s trademark.

Due to the close similarity of the Complainant’s trademark with the disputed domain name, 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.

The Respondent ought to have had constructive notice of the Complainant’s rights in the NALLI trademark.

The Respondent should have known of the Complainant’s trademark if it is shown to be well-known or in wide use on the Internet or otherwise. Such knowledge of the Respondent is an indicator of bad faith of the Respondent in registering the disputed domain name. The passive holding of a domain name has been held to be the use of the domain name in bad faith. The very use of a domain name by someone with no connection with the Complainant suggests opportunistic bad faith.

The Complaint ends with the following argument:

“Business transactions are primarily being carried out only through internet addresses rather than street addresses or post boxes or even faxes. Hence, it becomes critical that unscrupulous individuals are not allowed to usurp well-known trademarks and domain names to unfairly benefit from such act.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed 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 disputed domain name; and

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

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has long-standing trademark registrations for NALLI.

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>).

The question arises as to whether NALLI (with 2 Ls) is identical or confusingly similar to “nali” (with 1 L).

The Complainant asserts that these are identical. The Panel does not consider “nali” to be identical to NALLI.

The Panel does consider that “nali” is confusingly similar to NALLI. They have a similar look, and are likely to be pronounced the same.

The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s NALLI trademark, disregarding the Top-Level Domain “.life”.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Complainant states that the Complainant has not licensed the Respondent. However, the Complainant does not address any of the other limbs of paragraph 4(c).

In particular, the Complainant does not address paragraph 4(c)(i). The website at the disputed domain name is by all accounts advertising a skin product called NALI. This product and the website appear to be legitimate, and do not appear to be trading off the Complainant’s reputation or trademark. The website at the disputed domain name is not fully functional, although this does not strike the Panel as inherently unusual, as the disputed domain name was only registered a few months ago. According to the case file in this dispute, the website, such as it is, at the disputed domain name was in existence before notification of the dispute to the Respondent.

On balance, the Panel finds that the Complainant has not shown that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods, and therefore does not meet the requirements of paragraph 4(c)(i) of the Policy.

The Complainant did not address this issue at all. The Complainant offered no reason why paragraph 4(c)(i) of the Policy should not apply here. The Panel finds that the Complainant has not made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant does not meet the requirements of the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The Complainant’s case regarding bad faith is problematic.

Similar to the prior case of Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp, WIPO Case No. D2019-2642:

“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 Complainant’s argument, in summary, is that the Complainant is well-known, the Respondent should have had constructive notice of the Complainant’s rights, and that because the disputed domain name is not being used, the Complainant should succeed on the basis that passive holding can be bad faith.

The Panel does not accept the Complainant’s argument for the following reasons:

First, the disputed domain name is not identical to the Complainant’s trademark, even though the Complaint proceeds on that basis. The difference between the disputed domain name and the Complainant’s trademark is relevant to the question of whether the Respondent is likely to have had knowledge of the Complainant’s trademark and is trading off the Complainant’s reputation. The Complaint ignores that difference.

Second, the Complainant’s trademark does not appear to be as well-known as the Complainant asserts. It may be well-known in India and in Asia, and in certain demographics of the population around the world, but the Panel considers that it is not a widely known trademark in the general population throughout the world. This has been recognized by another panelist in a decision involving this trademark:

“Here, while it is not clear that the Complainant’s NALLI Mark is ‘well known’ in the traditional sense, it is a brand that is likely known to individuals in Asia, where the Complainant’s business first began and the Respondent resides.” Nalli Chinnasami Chetty v. Qun Ying Yuan, Huo Er Guo Si Shi Guo Po Sheng Wang Lao Ke Ji You Xian Gong Si, WIPO Case No. D2020-1069.

There is no evidence in this case that the Respondent, who has an address in France (if that is indeed correct), should have been aware of the Complainant or its trademark when registering the disputed domain name. The Complaint does not address this issue.

Third, contrary to assertions in the Complaint, the disputed domain name is being used. As discussed above, the website does not seem to be 100 per cent functional, but it does have content. The Complaint does not address this issue.

Fourth, there is no evidence that the Respondent is using the disputed domain name to take advantage of the Complainant or the Complainant’s NALLI trademark or reputation.

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 name of what appears to be the Respondent’s skin care product.

The Panel notes that there was a finding of reverse domain name hijacking against the Complainant in 2019. See Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp, cited above. This case was not cited by the Complainant. It is generally not acceptable to file boilerplate complaints only containing conclusory arguments, as the Complainant apparently did in that case and also in this case. That is particularly so when the arguments made are not relevant to the facts. The Complainant’s Complaint here verges on spurious.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: August 4, 2021