WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nalli Chinnasami Chetty v. Domain May Be for Sale / Hulmiho Ukolen, Poste restante

Case No. D2017-1860

1. The Parties

The Complainant is Nalli Chinnasami Chetty of Chennai, Tamil Nadu, India, represented by DePenning & DePenning of Chennai, India.

The Respondent is Domain May Be for Sale of Prague, Czech Republic / Hulmiho Ukolen, Poste restante of Finland.

2. The Domain Name and Registrar

The disputed domain name <nallisarees.com> (the “Disputed Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 2, 2017, 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 October 3, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 6, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2017.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 20, 2017. 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 states that it is “a registered partnership firm” established in 1928 that “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”, which has been used since 1935. The Complainant further states that it has conducted business online since 1998 using the domain name <nalli.com>, which was created on April 28, 1998, and that “the said website offers online sales of the goods emanating from the Complainant under the trade mark NALLI to facilitate the purchase of goods from any part of the world.”

The Complainant states, and provides evidence to support, that the NALLI trademark is protected by registrations in India and European Union (“EU”), including India Reg. Nos. 472754 and 903811; and EU Reg. Nos. 1373786 and 5690839, registered from at least 2005. These trademarks are referred to herein as the “NALLI Trademark”.

The Disputed Domain Name was registered on May 1, 2006, and is being used in connection with a website that “has several links on silk sarees, such as ‘Nalli Silk Sarees’, Nalli Sarees Online Shopping etc. Some of these links further lead to third part[y] e-commerce sites offering sale of sarees and clothing.”

5. Parties’ Contentions

A. Complainant

The Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the NALLI Trademark because, inter alia, “trade mark rights associated with well-known marks warrant special protection” and “[t]he disputed domain name clearly incorporates the well-known trade mark ‘NALLI’ of the complainant in its entirety.”

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent illegally and wrongfully adopted the well known trade mark NALLI of the Complainant with the intention to create an impression of an association with the Complainant”; “Complainant has not licensed or otherwise permitted the Respondent to use the mark ‘NALLI’, nor have they permitted the Respondent to apply for or use any ‘Domain Name’ incorporating the mark ‘NALLI’”; and “Complainant has no connection with the disputed domain name holder and the Complainant has never permitted the Respondent to create the disputed domain name.”

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[t]he purpose and intent of the Respondent in adopting the [Disputed Domain Name] is to en-cash on the name, fame, reputation, image and goodwill of the Complainant which has been built up assiduously over the last 88 years”; “[t]he intent of the Respondent has been to deceive the public at large, by employing a name which is identical with the name NALLI”; “the end customers are bound to assume a nexus between the impugned domain name and the Complainant”; “Respondent has attempted to make a deliberate misrepresentation to the public at large and it certainly cannot be a matter of mere coincidence”; “it is not possible to conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as the tort of passing off, an infringement of consumer protection legislation or an infringement of the Complainant’s rights under the trade mark law”; and the Disputed Domain Name “is so obviously connected with such a well-known mark belonging to the Complainant, that the very use by someone with no connection with the Complainant suggests opportunistic bad faith.”

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the NALLI Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the NALLI Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “nallisarees”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

Here, the Disputed Domain Name contains the NALLI Trademark in its entirety plus the word “sarees”. Although the Complainant failed to define the word “sarees”, the Panel has come to learn that a “saree” (or, more commonly, “sari”) is “a garment of southern Asian women that consists of several yards of lightweight cloth draped so that one end forms a skirt and the other a head or shoulder covering.”¹ As stated in WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

Further, the word “sarees” actually may enhance confusing similarity because the word is associated with the Complainant and the NALLI Trademark. See, e.g., IHOP IP, LLC v. Terranova Corporation Limited, WIPO Case No. D2012-2397 (inclusion of a word in a disputed domain name that is related to the relevant trademark “enhances rather than diminishes the confusing similarity of the Disputed Domain Name with the Complainant’s registered […] trademarks”); and Media West-DMR, Inc., Media West-GSI, Inc., Media West-INI, Inc., Media West-PNI, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Indiana Newspapers, Inc., Phoenix Newspapers, Inc., Gannett Co. Inc. v. Phil Nagy, WIPO Case No. D2005-1322 (“[c]onfusion is only heightened when the generic word added by a respondent is descriptive of a complainant’s goods or services marketed in relation to the mark”).

Accordingly, the Panel finds that the Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent illegally and wrongfully adopted the well known trade mark NALLI of the Complainant with the intention to create an impression of an association with the Complainant”; “Complainant has not licensed or otherwise permitted the Respondent to use the mark ‘NALLI’, nor have they permitted the Respondent to apply for or use any ‘Domain Name’ incorporating the mark ‘NALLI’”; and “Complainant has no connection with the disputed domain name holder and the Complainant has never permitted the Respondent to create the disputed domain name.”

WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain name is associated with monetized parking pages that contain links for goods or services related to the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.

Accordingly, the Panel finds that the Complainant has proven the third element of the Policy.

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 <nallisarees.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist
Date: December 4, 2017

¹ https://www.merriam-webster.com/dictionary/sarees (visited December 4, 2017). “[I]t has been accepted that a panel may 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.” WIPO Overview 3.0, section 4.8.