WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Puravankara Projects Limited v. Shiva Malhotra

Case No. D2014-0954

1. The Parties

Complainant is Puravankara Projects Limited of Kamataka, India, represented by K & S Partners, India.

Respondent is Shiva Malhotra of Wollstonecraft, New South Wales, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <purva.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 June 4, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 20, 2014.

The Center verified that the Complaint together with the amendment 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. The Response was filed with the Center on July 13, 2014.

The Center appointed Frederick M. Abbott, Andrew F. Christie and Gérald Page as panelists in this matter on July 28, 2014. The Panel finds that it was properly constituted. Each member of 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.

The Panel takes note that by email dated June 19, 2014, the Center advised Complainant of its preliminary acceptance of its refiled Complaint, and that a determination as to whether the Complaint should be accepted and a decision rendered would be in the hands of the panel to be appointed.

The Panel observes that the Complaint filed by Complainant is against the same Respondent in regard to the same disputed domain name as a previous UDRP case, Puravankara Projects Limited v. Shiva Malhotra, WIPO Case No. D2013-0260, decided on March 25, 2013. The Complaint in that previous proceeding was filed on February 7, 2013. Previous UDRP decisions have considered the circumstances under which refiled complaints may be accepted or rejected (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 4.4, including reference to Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490). Each proposed refiling is assessed on its individual merits and in its specific context by the panel appointed to decide, as a preliminary matter, whether the refiling should be accepted.

Complainant was unsuccessful in persuading the panel who rendered the previous determination (the “previous panel”) that the disputed domain name was the subject of abusive registration and use within the meaning of the Policy. That previous panel determined that Complainant had rights in a trademark, and that the disputed domain name was identical to that trademark. That previous panel further determined that Complainant had established that Respondent lacked rights or legitimate interests in the disputed domain name.

The previous panel was not persuaded that Respondent’s registration and use of the disputed domain name constituted bad faith. The specific grounds for that determination are discussed in Section 4, infra. The concluding observation was: “The Panel has sufficient doubts as to the Respondent’s intentions to recommend that if the Respondent’s future use of the Domain Name should suggest that the Respondent’s motivation at the outset was, as the Complainant has contended, in bad faith, the Complainant should be permitted to re-file the Complaint. In so recommending the Panel recognises that whether or not a re-filed complaint is to be accepted is a matter for the Center and the panel selected to decide the case” (Puravankara Projects Limited v. Shiva Malhotra, supra) [italics added].

As detailed below in Section 4, Complainant has submitted along with its Complaint new evidence of acts post-dating the previous panel determination that Complainant alleges justify the instant refiling and a new determination against Respondent. A majority of this Panel regards that new evidence as sufficient to warrant a finding that Respondent registered and used the disputed domain name in bad faith. That alone suggests that the evidence of acts occurring after the previous determination are sufficient to justify the refiling, bearing in mind that such evidence was not available to Complainant when it filed its original complaint in the previous case. The dissenting Panelist does not share the majority’s assessment of the new evidence submitted by Complainant in the sense of warranting a finding that Respondent registered and used the disputed domain name in bad faith. Nonetheless, the dissenting Panelist considers that the express recommendation of the previous panel regarding the instant refiling should, while not dispositive, be at least taken into account when assessing whether a refiling should be accepted. Whether or not ultimately persuasive, the new evidence submitted by Complainant concerns acts that post-date the previous determination. While in the dissenting Panelist’s view this evidence weakly supports a refiling and is not persuasive as to bad faith, in light of the recommendation of the previous panel it is not sufficiently without basis to preclude acceptance of the refiling. The dissenting Panelist here accepts the refiled Complaint, but finds against Complainant on the merits.

The Panel accepts Complainant’s refiled Complaint.

4. Factual Background

The Panel adopts the Factual Background of the previous panel in so far as it relates to matters occurring prior to or contemporaneous with the filing of the complaint in that proceeding. That Factual Background is repeated here:

As noted in the discussion of refiling, the previous panel determined that Complainant owns rights in the PURVA trademark in India, and that the disputed domain name, <purva.com> is identical to that trademark within the meaning of the Policy.

The previous panel determined that Complainant established that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent had asserted that he registered the disputed domain name because of its Jaini religious significance and because he claimed an intended use in connection with a website selling “books, scriptures and other accessories related to the Jain religion worldwide”. Through his company, AsiaPacific Tec Pty. Ltd., Respondent on December 24, 2012 (prior to Complainant’s filing of the original complaint) applied to the Australian Trade Mark Registry for registration of PURVA in connection with the retailing of goods, and claimed to have expended time and resources on preparing an online business. The previous panel determined that Respondent had produced no concrete evidence other than the trademark application to support his contention of a plan to use the disputed domain name for a bona fide offering of goods and services. On this basis, the previous panel rejected Respondent’s assertion of rights or legitimate interests in the disputed domain name.

Subsequent to the previous panel determination, Complainant filed a notice of intention to oppose Respondent’s (through his company) application for trademark registration at the Australian Trade Marks Registry. That notice was rejected by the Australian trademark office (IP Australia), according to Complainant because it did not have substantial use of the corresponding PURVA trademark in Australia. Complainant also provided evidence that Respondent had allowed its application for registration of the PURVA trademark in Australia to lapse, according to Complainant for non-payment of fees. A printout furnished by Complainant regarding trademark status indicates that Respondent’s application was approved by IP Australia (and lapsed), and Respondent has acknowledged that his trademark application for Australia has lapsed, stating that he decided against registering a trademark of religious significance.

The previous panel weighed a series of factors in determining that Complainant had failed to establish that Respondent registered and used the disputed domain name in bad faith. Because this decision on refiling involves weighing those factors anew based on subsequent acts, this Panel considers it expedient to repeat the principal assessment of the previous panel on the issue of bad faith here:

A screenshot of the website identified by the disputed domain name included by Complainant in its filing shows a blog entry, “Welcome to Purva.com”, followed by “Welcome to the great world of Purva.com. The website is being developed to deliver an excellent product to all viewers. Please keep coming back to enjoy the excellent product.” According to Complainant, this is the substance of the website identified by the disputed domain name that has appeared since the conclusion of the previous proceeding (see also the discussion of the activities of Alex Domain Broker, infra).

As previously indicated, Respondent subsequent to the previous panel determination has allowed the application for trade mark registration in Australia referenced in paragraph 2 above to lapse. Based on a printout of Trade Mark Details furnished by Complainant, the lapsing (following approval) was “advertised” by IP Australia on November 7, 2013 (approximately 7 months following the determination by the previous panel).

In the previous proceeding it was noted that, while not mentioned in the complaint, Complainant appeared to be a prior registrant of the disputed domain name; Respondent claimed to have acquired it through an auction in May 2012. In the present Complaint, Complainant argues that it had paid for renewal of registration of the disputed domain name for a period of five years, and that it was unable to explain why the registration had expired. Complainant has newly provided evidence of a chain of email correspondence with a domain name registration services provider in India, dating from March 27, 2010 to April 20, 2010. According to the services provider, the registration was not renewed for 5 years because Complainant had not transmitted the requisite payment to the service provider. As a courtesy, the service provider had renewed the registration for a period only of one year, expiring on March 28, 2011. There is a subsequent email from Complainant to the service provider requesting confirmation of a five-year renewal stating that it had in fact paid the five-year renewal amount and the amount was collected by the service provider, but despite inquiry there was no confirmation on the record of receipt of payment or of renewal from the service provider. There is no further explanation as to why Complainant’s registration of the disputed domain name was permitted to expire such that Respondent was able to secure it at auction in May 2012.

Complainant has provided email correspondence from three different parties to Complainant offering to act as “broker” to secure the disputed domain name from Respondent. The first, dated April 2013 from a party identified as “Alex Domain Broker”, originating from “Alex Dselva [mailto:alexdomainbroker@[redacted]]”, stated:

A subsequent email dated May 6, 2013 from “Alex”, originating from “India Leaks [mailto:india.leaks@[redacted]]”, stated:

After a delay explained by Alex as the consequence of an accident, there is substantial additional correspondence between “Alex Domain Broker” and Complainant’s Vice President-Legal. Starting with an email dated November 27, 2013, Alex suggests a price for acquisition of the disputed domain name of USD 9 million, plus a seven percent brokerage fee payable by Complainant. By email dated November 19, 2013, Alex advised Complainant’s legal counsel that he had asked his client (allegedly Respondent) to write his name as a broker on the webpage identified by the disputed domain name, and suggested that Complainant check the website. Further correspondence indicates that Alex posted only his first name on the website, but subsequently posted his full name. Thereafter the following was posted on the website identified by the disputed domain name, apparently on or about December 10, 2013:

The printouts of webpages furnished by Complainant regarding the above-quoted posting by Alex Dselva show the message as a “blog” posting, as evidenced by the structure of additional blank input spaces, a separate identifier of the “Blog Archive” listing a single posting for December with the same title (“Alex Dselva is my only sole broker.”), and the terms “Next Blog” in a taskbar above the posting on one of the printouts.

Following some further exchanges, by email dated December 18, 2013, Complainant’s legal counsel stated to Alex:

There is a good deal of subsequent back-and-forth between Complainant and Alex Domain Broker in which Alex accuses Complainant and its officers of being shortsighted in protecting their valuable brand and threatening to increase the purchase price on a weekly basis, and on or about February 26, 2014, the parties accuse each other of unprofessional conduct. By email dated April 16, 2014, Complainant advises:

There is no indication throughout any of this correspondence that Respondent was involved in this discussion (noting, however, the message(s) posted by Alex on the website identified by the disputed domain name). Respondent has denied any knowledge of this broker activity, and has suggested that the matter might be tendered to the FBI, ASIO, or other competent authority to investigate the source of the emails from Alex.

Complainant has also submitted evidence of an approach by Sambisavi Kandula and his wife, Pavani, to Complainant offering to broker the sale of the disputed domain name. This exchange begins with an email dated June 12, 2013 to the General Manager-Legal of Complainant from Pavani, stating:

As a postscript to an email from Pavani dated June 15, 2013, she advises:

By email dated June 24, 2013, Pavani states:

Subsequently, Pavani and her husband Sambasiva advise Complainant that they have entered into detailed discussions with Respondent’s technical and legal consultant, and have been advised to their dismay that the asking price for the disputed domain name is USD two million, which they regard as too high and are seeking to renegotiate. They propose to use escrow.com to carry out the transaction.

Respondent by email dated July 15, 2013 indicates that Complainant’s management is considering the proposal, but in the meantime requires a letter from Respondent confirming that the brokers are authorized to act on his behalf. Sambasiva transmits an email to Complainant dated July 17, 2013, indicating that the legal representative of Respondent has sent him the following message: “We authorize Mr. Sambasiva R Kandula to broker the sale of the domain name Purva.com till 5pm AEST, 23/7/2013.”

By email dated July 18, 2013, Complainant replies:

By email dated July 26, 2013, Sambasiva responds:

There is apparently no further correspondence between these parties.

Complainant has also transmitted an email from a party named “Chiang (Domain Broker)” dated October 19, 2013, indicating that he was asked by the “owner of the above domain name and my client to find a buyer for it”. Chiang indicates that there is another anxious buyer waiting in the wings to use it for an adult site for their online clients. He concludes:

There does not appear to be any return correspondence from Complainant to Chiang.

Complainant has repeated and provided evidence that was either furnished or available in respect of the previous proceeding regarding the disputed domain name.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution proceedings under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider such as the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant reviews the decision of the previous panel, and relies on it to demonstrate bad faith based on subsequent developments.

Complainant indicates that subsequent events indicate that Respondent registered the disputed domain name “only to hold the Complainant to ransom and sell the domain name to it for an extortionate price”.

Complainant states that since the previous decision, the disputed domain name has been used to identify a website welcoming visitors to “the great world of Purva.com”, and for no other purpose.

Complainant repeats that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that trademark.

Complainant reiterates that Respondent lacks rights or legitimate interests in the disputed domain name. In regard to this element of the Policy, in terms of new argumentation, Complainant indicates that Respondent made false submissions in the previous proceeding by indicating that he had invested time and money in the disputed domain name and in starting his business, since there is no evidence of that new business.

Complainant refers to prior use by Respondent of the disputed domain name in the context of hosting adult and obscene content (though refers to no supporting evidence for this alleged activity other than its email to the Registrar alleging as such).

Complainant alleges that subsequent to the previous decision, Respondent has attempted to “pressurize, blackmail and coerce the Complainant into buying the dispute [sic] Domain Name”. Complainant refers to correspondence from three brokers, “Pavani”, “Chiang” and “Broker Alex” as evidencing Respondent’s true intention for registering the disputed domain name.

Complainant indicates that Respondent posted a message on a website “www.domainsdomains.com”, dated February 17, 2013, stating, inter alia, that his business includes brokering domain names.

Complainant states that Respondent has registered 39 domain names and used them to prevent third parties from registering their trademarks. Complainant furnishes a list domain names for which Respondent is apparently listed in the contact data.

Complainant requests the Panel to make a determination that Respondent registered and is using the disputed domain name in bad faith, and to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent argues as it previously has that the term “purva” is a generic name for a religious book of the Jain religion and a very common name in Hindu mythology.

With respect to rights or legitimate interests, Respondent reiterates his position in the previous proceeding. Regarding the application for registration of the trademark PURVA in Australia, which application was approved “but I change the model and not renewed the trademark. This decision was taken after I realized that its hard to trademark God (anything religious) and I my energies would be best spent in propagating the idea instead of running around filing trademarks for the same”. Respondent reiterates that he is working on using the disputed domain name for selling Jain books, scriptures and other accessories related to the Jain religion worldwide. Respondent states that it is false that the disputed domain name has been used to host pornographic content, and that Complainant has provided no actual evidence of such use.

Respondent expressly denies any involvement with approaches by brokers regarding the potential sale and transfer of the disputed domain name to Complainant. Respondent indicates that Complainant has provided no evidence that any communication from a broker originated with a contact and/or email account of his. In respect to the posting of the broker Alex on the website identified by the disputed domain name, Respondent states that it is easy to insert information on a third-party’s website. To illustrate that, he engaged an information technology student to place the words “My Broker Alex” on Complainant’s business home page, and provided a screenshot along with his Response.

Respondent acknowledges that he sold the domain name <godavari.com> to Pavani, but has no recollection of engaging this broker regarding the disputed domain name.

Regarding his posting on “www.domainsdomains.com” of February 17, 2013, Respondent states that there is no link between his published blog and his ownership of the disputed domain name.

Respondent states that Complainant has failed to substantiate any claims regarding registration of additional domain names for the purpose of preventing registration by trademark owners.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name comprises, in its entirety, Complainant’s registered PURVA trademark. The Panel finds that the disputed domain name is identical to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Respondent is not a licensee of, or otherwise affiliated with, Complainant, and has not been authorized by Complainant to use its PURVA trademark. Respondent claims that he registered the disputed domain name for use in relation to a proposed online store selling books, scriptures and other accessories related to the Jain religion, but provided no evidence of any bona fide preparations to that effect. The evidence provided by Complainant shows that the disputed domain name resolves to a simple blog template website without much content other than the “Welcome to Purva” blog post as previously mentioned. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Majority opinion:

C. Registered and Used in Bad Faith

The previous panel stated that the case was not easy to decide and that “it is conceivable that the Respondent registered the Domain Name, knowing of the Complainant’s trade mark rights and with the intention at some time to exploit those rights to his own advantage by bad faith use”. The majority of the Panel considers that the evidence provided by Complainant of Respondent’s actions subsequent to the previous determination, when considered together with the evidence provided by Complainant in support of its case in the previous determination (the “previous evidence”), demonstrates that what the previous panel considered to be conceivable as regards bad faith is in fact more likely than not.

In the majority’s opinion, the following aspects of the previous evidence are pertinent to the issue of whether Respondent has registered and is using the disputed domain name in bad faith: (i) Respondent acquired the disputed domain name in May of 2012 at an auction from a website that sells expired domain names, suggesting that Respondent’s purchase may have been opportunistic rather than in furtherance of a genuine intention to create a business of selling Jain-related products; (ii) the parking page to which the disputed domain name originally resolved contained automatically-generated links, many of which were to businesses connected to the field of Complainant’s business, indicating that the name “purva” was sufficiently distinctive in the property development field for the software to have selected links to related businesses; (iii) the parking page to which the disputed domain name originally resolved contained the text “Want to buy this domain?” and a box beneath it reading “Let us help”, suggesting that Respondent’s intention in registering the disputed domain name was to sell it rather than use it in connection with a bona fide business; (iv) Respondent filed an Australian trademark application for a term that he yet maintains in his Response is descriptive and hence lacking distinctiveness, and did so only after receiving notice of Complainant’s concerns about his use of the disputed domain name, both of which suggest that Respondent was seeking to concoct a claim to a right or legitimate interest in the disputed domain name; and (v) Respondent provided no evidence of preparations to use the disputed domain name for the purpose for which it was allegedly registered, suggesting that Respondent had no bona fide intention to use the disputed domain name for that purpose.

In the majority’s opinion, the following aspects of the evidence provided by Complainant of Respondent’s actions subsequent to the previous determination, when considered together with the previous evidence, establish, on the balance of probabilities, that Respondent registered the disputed domain name for the purpose of selling it to Complainant for an amount in excess of its out-of-pocket expenses: (i) Respondent, after prevailing in the previous determination, allowed its Australian trademark application to lapse despite the fact that it proceeded to acceptance, suggesting both that the purpose of the application was to concoct evidence of a right or legitimate interest in the disputed domain name, and that the asserted intention to use the disputed domain name in relation to a business was not genuine; and (ii) one of the brokers that contacted Complainant offering to obtain transfer of the disputed domain name to Complainant for a significant sum claimed to have authority to act on behalf of Respondent and, when requested by Complainant to provide evidence of such authority, apparently arranged for Respondent to post a note to the website to which the disputed domain name resolved stating that the broker did indeed have Respondent’s authority to act on his behalf.

Respondent claimed that Complainant’s evidence of the posting of the note regarding the broker’s authority was fabricated. The minority panelist is influenced by the fact that the content management system for Respondent’s website might have had its settings configured so as to allow any member of the public (in this case, the broker) to make a post to Respondent’s website without Respondent’s consent. The majority of the Panel recognizes that this could be so, but notes that this is not what Respondent appears to be alleging. Respondent’s express allegation is that Complainant produced a “doctored screenshot”. In support of this allegation, Respondent submitted a screenshot of Complainant’s website on which appears the words “My borker [sic] is Alex”, and asserts that this shows “how any image can be doctored”. The majority understands Respondent to be asserting that Complainant superimposed an image of the post onto an image of Respondent’s webpage, to produce the appearance that Respondent had made the post acknowledging the broker’s authority. If Respondent in fact believed that the broker simply made the post himself because Respondent’s website settings were such as to permit any person to do so, the majority would have expected Respondent to expressly assert such, and to provide evidence in support of that assertion, such as screenshots of other posts made by members of the public. The fact is, Respondent did not make such an assertion and did not provide such evidence. Instead, Respondent made the claim that Complainant’s evidence was “doctored”. The majority of the Panel acknowledges that, if Complainant’s evidence was in fact “doctored”, proving that might be difficult, if not impossible at least under Policy proceedings. Nevertheless, the majority believes it can and should reach a view on whether Complainant has fabricated this evidence. Taking into account all the circumstances of the case – including, in particular, the overall impression of the probity of both parties’ evidence and claims – the majority of the Panel consider that this aspect (and all other aspects) of Complainant’s evidence is, more likely than not, genuine. Accordingly, the majority finds that Respondent offered to sell the disputed domain name to Complainant for the sum of USD 9 million.

For all the foregoing reasons, the majority of the Panel concludes, on the balance of probabilities, that the disputed domain name has been registered and is being used in bad faith.

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, <purva.com>, be transferred to Complainant.

Frederick M. Abbott
Presiding Panelist (Dissenting)

Andrew F. Christie
Panelist

Gérald Page
Panelist

Date: August 18, 2014

Dissenting opinion:

Registered and Used in Bad Faith

The principle of res judicata appears to be common to well-developed legal systems.¹ The instant proceeding does not concern a strict application of that principle, which is designed to put an end to litigation, because (a) the effective invitation of the previous panel for a refiling appears to constitute something of an administrative prior-exclusion of the principle, (b) there are “new facts” presented by Complainant that raise a marginal issue of some new matter, and (c) strict application of res judicata would appear to presume that a panel rendering a decision under the Policy represents a final judicial determination, and this is open to question (inter alia, because the same matter may be referred to a court that may or may not give deference to the decision). Nonetheless, in the view of this dissenting Panelist the majority decision comes very close to a decision by the same administrative body, between the same parties, on the same underlying facts, arriving at a different conclusion. As a matter of general UDRP practice, this Panelist does not think such revisiting should be encouraged except perhaps in specific very limited circumstances. Domain name registrants would be subject to additional expense and legal insecurity regarding their rights.

The previous panel engaged in a detailed assessment and balancing of a number of factors in ultimately deciding that Complainant failed to demonstrate that Respondent registered and was using the disputed domain name in bad faith. However, the previous panel concluded that future conduct by Respondent might shed light on his intention in registering the disputed domain name and this could tip the balance against him. A UDRP panelist is charged with making a determination regarding whether a complaining party has met its burden of proof in establishing a respondent’s bad faith intent at the time of registration -- which registration typically has occurred before that decision is rendered. The intent in registration, whether or not in bad faith, is based on the evidence and legal arguments that are presented by the parties. In this Panelist’s view, UDRP panelists should be wary of inviting refilings by the same complainants against the same respondents and domain names -- revisiting the question of intent at the time of registration -- except perhaps in very narrow circumstances.

The majority here begins by reiterating the “previous evidence”. That evidence was weighed by the previous panelist in rendering his determination, i.e., that bad faith was not demonstrated.²

Under “previous evidence”, the majority refers to the fact that Respondent acquired the disputed domain name in a public auction of expired domain names. In the previous proceeding, it appears Complainant inexplicably failed to mention that prior to Respondent’s acquisition of the disputed domain name, Complainant had been the registrant. Complainant now provides “new evidence” in the form of a cut and paste email exchange that it lost its registration of the disputed domain name because, according to Complainant, its service provider, without explanation, failed to apply the requisite renewal fees to its account. It provides some evidence that it tried to remedy that, but Complainant did not follow up to get a confirmation that its registration had been renewed for the period of five years that it claims to have been seeking. It left the matter hanging. In this Panelist’s view, this particular aspect of Complainant’s new evidence demonstrates that Complainant, on notice from its service provider that registration of the disputed domain name would expire after one year, failed to ascertain and confirm that its registration would remain in effect for five years. The disputed domain name registration expired after one year.

The majority suggests that Respondent acted opportunistically by buying at auction the disputed domain name. With Complainant having failed to renew its registration of the disputed domain name, why should Respondent be faulted for having purchased it? Where is the bad faith in that? Why does this tip the balance in favor of Complainant? Respondent did not cause Complainant to give up its registration of the disputed domain name.

As a matter of “new evidence”, since conclusion of the prior proceeding, Respondent has used the disputed domain name to direct Internet users to a website stating: “Welcome to the great world of Purva.com. The website is being developed to deliver an excellent product to all viewers. Please keep coming back to enjoy the excellent product.”

This is not evidence of bad faith.

The majority focuses on two “new” matters that it views as shifting the weighting of factors to showing that Respondent registered the disputed domain name in bad faith.

The first is that Respondent allowed an application for registration of the trademark PURVA on the Australian Trademark Registry to lapse. According to the majority, this constitutes evidence that Respondent attempted to “concoct evidence” of a right or legitimate interest in the disputed domain name. Several points must be considered.

The previous panel did not consider Respondent’s filing of the application for trademark registration as establishing a legitimate intention to do business. Regarding the trademark application, the previous panel said: “This is the only indication that the Respondent may indeed be intending to use the Domain Name for the purpose of online retailing of goods, but of itself (pending registration) it gives rise to no relevant rights or legitimate interests in respect of the Domain Name”, and; “There is nothing before the Panel, other than his company’s trade mark application to support the Respondent’s claim that he has been planning to use the Domain Name for a bona fide offering of goods and services.” The previous panel concluded, “In the absence of any cogent evidence in support of his claim, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.”

Since the application for trademark registration was not considered material in relation to rights or legitimate interests in the previous proceeding, and Respondent’s claim to rights or legitimate interests was rejected, allowing the application to lapse would not affect the previous determination.

Regarding the element of bad faith, specifically with respect to the trademark application, the previous panel said:

Additionally, the following is quoted from the previous decision: “On February 7, 2013 the Complaint was filed with the Center. On the evidence before the Panel, this is the first occasion upon which the Respondent must have been aware of the Complainant’s cause for complaint.” According to the previous decision, Complainant first visited Respondent’s website identified by the disputed domain name on January 16, 2013, discovering it to be problematic, and notifying Respondent. Thereafter, Respondent modified the website.³

There are many good faith reasons why a party may elect to allow a trademark application to lapse. He may, as Respondent contends here, change his mind about whether it is appropriate to register a term with religious significance. He may have contemplated a particular business plan, and changed his mind, deciding not to pay trademark registration fees.⁴

It is possible to view the decision by Respondent to allow the application for trademark registration to lapse as evidence that he did not seriously intend to establish a business selling religious items. But, using a domain name to establish a business is not a prerequisite to avoiding a finding of bad faith.

If the previous panel had relied on the trademark registration application to establish rights or legitimate interests on the part of Respondent, this dissenting Panelist would consider its lapse a material fact on that issue. It might not alter the balance sufficiently to change the outcome of a determination. That would depend on other factors. But, on the issue of bad faith the lapse of the trademark application does not to this Panelist appear to materially alter the balance initially struck by the previous panel.

The second “new fact” relied on by the majority to shift the balance in favor of bad faith is the approach to Complainant by Alex Domain Broker (hereinafter “Alex”) offering to acquire the disputed domain name from Respondent for a sum of USD 9 million. The majority states that disproving the “legitimacy” of this aspect of Complainant’s evidence “might be difficult, if not impossible.” The majority concludes “this aspect (and all other aspects) of Complainant’s evidence is, more likely than not, genuine. Accordingly, the majority finds that Respondent offered to sell the disputed domain name to Complainant for the sum of USD 9 million”.

To the dissenting Panelist, the correspondence between Alex and Complainant appears as a “scam” attempt by a third party (i.e., Alex), and there is no credible evidence in the case before the Panel that Respondent participated in this exchange.

The correspondence from “Alex” begins with reference to “internet records” as a source of information, and an offer from Alex (in broken English) to broker a transaction. This is followed by a reference to negotiating with a Chinese porn company, and awareness by Alex that Complainant lost a UDRP dispute. About six months pass before Alex’s next email message, when he sets on a price of USD 9 million, plus brokerage fee. Alex says he asked Respondent to post his name on Respondent’s website. What appears on Respondent’s website in December 2013 is some form of “blog” posting using language the dissenting panel finds odd:

Complainant expresses strong suspicion of Alex, asking why Respondent’s name is not mentioned anywhere, and without providing any detailed instructions. Complainant subsequently breaks off discussions with Alex, accusing him of acting on behalf of Respondent, while having extensively questioned his authority to act on behalf of Respondent.

The dissenting Panelist is not in a position to act as Internet forensic science expert. However, the dissenting Panelist observes as a matter of “administrative panelist knowledge” that content management systems (CMS) in wide public use (e.g., Drupal) offer routine implementation of “blog” posting blocks or pages of one form or another, and that such blocks or pages typically allow third party Internet users to post information. (Such CMS features can be adapted in myriad ways in terms of user access and other functions. The “default” set up will differ from program to program.) The fact that “Alex” was able to post a statement on Respondent’s webpage does not to the dissenting Panelist appear dispositive of anything. It does not transform a poorly phrased set of statements that are practically nonsensical into a convincing representation of Respondent.

Like the majority, the dissenting Panelist is not in a position to “disprove” the legitimacy of Complainant’s proffered evidence. But, to the dissenting Panelist evidence sufficient to transform a finding that Complainant had failed to establish Respondent’s bad faith into a decision that Respondent acted in bad faith must be credible. The dissenting Panelist does not find this evidence proffered by Complainant credible toward establishing Respondent’s alleged bad faith.

The dissenting Panelist does not suggest that Complainant doctored the screenshot on which Alex’s assertion of exclusive broker rights appears, although Respondent has suggested this might be the case. Respondent has flatly denied having anything whatsoever do with Alex, and Respondent’s suggestion might be considered in that light. In the dissenting Panelist’s view, the entire context of the approach by Alex strongly suggests that he was attempting to extract payment from Complainant under false pretenses. Alex was certainly acting in bad faith. What is missing is a convincing link to Respondent.

As the majority has focused on these two elements, the dissent will not go through each bit of material provided by Complainant. None of the approaches by “brokers” are linked by meaningful evidence to Respondent. The fact that a few individuals read the decision of the previous panelist and decided to approach Complainant as “brokers” does in the dissenting Panel’s view not implicate Respondent, nor is it evidence of wrongdoing by Respondent.

Complainant allowed its registration of the disputed domain name to expire, and failed to mention that in its previous complaint. It has provided “new evidence” that it allowed registration of the disputed domain name to lapse, being last notified by its service provider that it would lapse when it did. Respondent thereafter acquired the disputed domain name at auction. Respondent, before he acquired the disputed domain name, was not under an obligation to ask Complainant whether it may have made a mistake. Respondent might plausibly have concluded that Complainant no longer wanted the disputed domain name.

There was plenty of indication in the decision by the previous panel that Respondent has been involved in registering and trading in domain names, a fact that Respondent acknowledged. There were a number of disputed facts at issue in the previous decision. This dissenting Panelist does not express a view on whether he would have balanced the elements the same way as the previous panel. But, the previous panel decided that Complainant had failed to demonstrate that Respondent registered and was using the disputed domain name in bad faith. The question in this proceeding should thus be whether new evidence has been introduced that alters that determination. Respondent has acknowledged that he allowed an application for trademark registration to lapse. In the dissenting Panelist’s view, that does not transform his conduct into “bad faith”. Respondent has flatly denied any involvement with the “brokers”. There is no meaningful evidence that he was in any way involved with them. That does not prove that he was not involved with them. It means that the evidence does not support that he was. There is, in this dissenting Panelist’s view, a failure of proof.

This dissenting Panelist would deny relief to Complainant.

Frederick M. Abbott
Presiding Panelist (Dissenting)

Date: August 18, 2014

¹ A survey of the approaches followed among European legal systems, including the British Commonwealth system, can be found in a Decision of the Technical Board of Appeal 3.3.1 of the European Patent Office, Proctor & Gamble v. Unilever, May 3, 1996, where it summarizes:

2.5 Without needing to consider the laws of the Contracting States in more detail, in the Board's judgment, it can be seen from the above that any generally recognized principle of estoppel by rem judicatam for the Contracting States is of extremely narrow scope as it will involve something that has been:

(a) judicially determined

(b) in a final manner

(c) by a tribunal of competent jurisdiction,

(d) where the issues of fact are the same,

(e) the parties (or their successors in title) are the same, and

(f) the legal capacities of the parties are the same.

2.7 As stated above, the principle of res judicata is based on public policy that there should be an end to litigation.

Excerpted in Frederick Abbott, Thomas Cartier and Francis Gurry, International Intellectual Property in an Integrated World Economy, 2d ed. 2011, Aspen Casebook Series (Kluwer 2011), pgs. 277-83.

² It is neither necessary nor appropriate to revisit the weighing of those factors by the previous panelist insofar if there is nothing “new” to change the balance. The dissenting panel does not share the view that there is such new evidence.

³ The previous panel did not make a finding that Respondent was aware of Complainant’s trademark rights in India when he filed his trademark application in Australia. Complainant has provided evidence of correspondence it sent in December 2012 to a proxy/privacy shield enterprise under which the disputed domain name might have been registered. That correspondence is inconclusive regarding whether Respondent might have received any notice of Complainant’s inquiry. It also appears inconsistent with the finding of the previous panel that Complainant appears to have first become aware of Respondent’s website in January 2013. The previous decision does not discuss this correspondence, but if Complainant had been aware of and in contact with a registrar in December 2012, this is information that was in Complainant’s possession before the previous proceeding. It does not involve an event occurring after the previous decision.

⁴ The dissenting Panel visited the website of IP Australia, finding that the fees for an application vary (depending on the route) somewhere between AUD 120 and AUD 370, and generally on the lower side of that. As the discussion of the potential “sale” of the disputed domain name continues, it is useful to bear in mind these virtually insignificant figures in relation to the price that Respondent is allegedly attempting to extract from Complainant, i.e., USD 9 million.