IndianOil.com Beats Back A WIPO Challenge from Indian Oil Corporation Who Won A UDRP On IndianOil.Org In January

Back In January we wrote and criticized a WIPO decision handing the generic domain name IndianOil.Org to the Indian Oil Corporation Limited of New Delhi, India

Back at the time we asked, knowing that the same company filed a UDRP against the com version , whether IndianOil.com would be next?

Today we got an answer.

No.

In a three member panel WIPO decision entered today, the domain holder represented by Ari Goldberger, beat back a challenge by Indian Oil Corporation  on the domain name IndianOil.com

On this issue of whether the complainant held a trademark the panel found:

“the Complainant contends that the transfer of the disputed domain name to another registrar represents deceptive, fraudulent and misleading activities by the Respondent and that such a transfer is contrary to the injunctive command in paragraph 8(a) of the Policy which prohibits such transfer to another holder during a pending administrative proceedings and thus constitutes “cyber flying”.

“Furthermore, having observed that there were false details in the registrant’s record such as the e-mail address “udrp@udrp.udrp” and the telephone number “+000.0000000000”, the Complainant represents this as an attempt to mislead the Panel and as constituting evidence of abuse of the process of law and of the UDRP proceedings.”

“In respect of the Complainant, the Panel felt that it could have provided further evidence of its rights under trademark registrations and of its submission that the use by the Respondent of the domain name and the website to which it resolved was to direct Internet visitors to competitors of the Complainant. In particular, it could have provided documentary evidence of trademark registration and evidence of specific products and competitors allegedly promoted on the Respondent’s website.”

“In respect of the Respondent, although it relied on the lack of documentary evidence by the Complainant of its trademark registration, it would have been useful had it provided specific evidence of the date and number of domain names involved in the change of registrar and explained what appear to be inconsistencies in addresses in respect of the transfer of the domain names to a different registrar. ”

While the “Panel concludes that the Complainant has not established that it has a registered trademark, The Panel is, however, satisfied that the Complainant has made out its case for an unregistered trademark in India for the term INDIANOIL. ”

“The Panel has reached this conclusion because the evidence is to the effect that there has been at least 40 years of use of the term INDIANOIL as a trademark to indicate certain petroleum products as being the products of the Complainant between 1959 and 2001 when the disputed domain name was registered by the Respondent.”

“Furthermore, according to the evidence, the Complainant operates a network of 17606 fuel stations, presumably less in 2001, yet most likely still the largest in India, one of said stations with the Trademark being shown in a photograph at page 44 of said book Exhibit H. Accordingly, there has been use of the trademark with a logo and as the trademark alone.”

“On balance, and without other evidence to rely upon to the contrary, the probability is that the trademark was initially descriptive, but that it acquired some distinctiveness, even if it was not as famous as the Complainant contends, particularly in 2001 when the disputed domain name was registered.”

“Accordingly, the Panel concludes on the balance of probabilities that the Complainant has rights in a trademark, an essential element to be established under the Policy and that the trademark is a common law trademark for INDIANOIL.”

“The Panel also finds that the disputed domain name is identical to the trademark and that accordingly the Complainant has made out the first of the three elements that it must establish.”

“The Respondent seeks to rebut the prima facie case against it by relying heavily on the fact that the disputed domain name consists of two words, one being an adjective fashioned from the name of a geographical entity, namely ‘indian’ and the other being a generic word, namely ‘oil’. ”

“As such, this gets the Respondent off to a good start, because the development of UDRP jurisprudence has been in the direction of recognizing the legitimate interest of a domain name registrant who invokes the name of a country or state in a domain name and also the right of a registrant who merely uses a common, dictionary or, as sometimes arises, a generic word that is open to all comers and over which no one else can have superior rights. ”

“Like everything else, this proposition is subject to exceptions and they will be considered later. But in the absence of exceptions the jurisprudence has, if anything, encouraged rather than discouraged the use of these groups of words in domain names.”

“In the case of generic words, the trend has been the same. Thus, the author David Lindsay of International Domain Name Law, ICANN and the UDRP has been able to say: “Where a respondent registers a generic term as a domain name and there are no indications of bad faith, then the respondent will have rights or legitimate interests in the domain name…Another way to state this principle is that the first person to register a generic term as a domain name in good faith will have legitimate interests in that domain name. ”

“In the present case, as the geographical entity has been put into the form of an adjective to qualify the noun ‘oil’ the combined effect of the two words is really to create a generic expression. ”

Accordingly, the use of that generic expression in the disputed domain name will give rise to a right or legitimate interest unless the Respondent has disqualified itself by evidence suggesting that it was intending “to capitalize on the complainant’s trademark interest.”

“This sometimes is put as whether the respondent was targeting the complainant or whether it was acting in bad faith. In other words, the legitimate interest does not arise automatically, for, as the WIPO Overview puts it:

“2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic (dictionary) word(s)?

“Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name “apple” if it uses it for a site for apples but not if the site is aimed at selling computers or pornography). (Emphasis added).””

“The essential question, therefore, is whether it has been established or can be inferred from the evidence that the Respondent was targeting the Complainant and its trademark, acting in bad faith towards it or capitalizing on the Complainant’s trademark interest.”

“Applying those tests, it must first be said that the evidence shows that the Complainant’s trademark must be very well known in India, but there is little evidence presented to show us the renown of the trademark outside of India.”

On the balance of probabilities, the Panel’s view is that the standing of the trademark outside India is probably similar to the standing of the trademark in Jet Marques v. Vertical Axis, Inc.:

“ The Complainant’s evidence of the use of the trademark outside France is insufficient to establish the reputation outside that country for which the Complainant contends. The Panel accepts that the trademark may be known by those engaged in the travel industry, but the Respondent does not appear to fit into that category. The Respondent’s website appears to do little more than provide a platform for sponsored advertisements provided by others, with the Respondent deriving click-through revenue in exchange for providing that service.”

“Secondly, the evidence is that the Respondent has registered many other generic names, over 280, including many that are combinations of the adjective Indian and a noun, such as <indiangasolineprices.com>, <indiantrees.com>, <indiancorn.com>, <indianbeers.com>, <indianjewelry.com> and many which are the combination of a geographical entity fashioned into an adjective together with the noun ‘oil’, such as <egyptianoil.com> and <albertaoil.com>. This practice, especially given that it is the Respondent’s business to register such names, not only tends to suggest that it was probably not targeting the Complainant, but makes it inherently unlikely that it was doing so.”

“Thirdly, judging by the use the Respondent made of the disputed domain name and the website to which it resolved, it was not targeting the Complainant. The website to which the disputed domain name resolves is a parking page with links to all of the blandishments of modern life from dating services to finance and motor cars and is clearly designed to be a generalist site to which users will find their way while searching, as they do, for generic websites that promote general goods and services.”

“In this regard, the Panel notes the allegation of the Complainant that the website has links to the Complainant’s competitors which are said to constitute strong evidence that the Respondent really was targeting the Complainant. The Panel cannot see how this can be so.”

“Even on the screenshot of the Respondent’s home page exhibited to the Complaint there were no links to apparent competitors of the Complainant and there are none such on the website as it presently appears. ”

“In any event, the Panel finds that on this issue, there are no links to competitors of the Complainant and nothing to suggest that the Complainant was targeted by the Respondent. ”

“The links are essentially generic themselves and, contrary to the Complainant’s submissions, this is an entirely legitimate use of the internet and the domain name system, provided that the registrant does not transgress on the rights of others.”

“Accordingly, the Panel finds that the Respondent has rebutted the prima facie case against it and has shown a right or legitimate interest in the disputed domain name.”

“The Panel has found that the Respondent has in essence registered a generic expression, along with over 280 others, and that its primary intention, which it has carried out, was to earn income from the display of links to generic goods and services and to make money by that means.”

“On the other hand, the Complainant is a large company well known in India. There is however less, apart from passing references to the Complainant’s joint ventures overseas, that supports the notion that the trademark is famous or well-known world-wide.”

“In particular, for a finding of bad faith the question is: would the Complainant and its trademark be known to people outside India, in particular in Barbados where the Respondent is based, so that it could be assumed that the Respondent must have been motivated by bad faith towards the Complainant? Furthermore this possible renown outside of India may come predominantly from its trade name rather than the trademark, while in UDRP cases it is only rights based on the latter which are considered.”

“On the Respondent’s side are the facts that the Complainant must be less well known outside India, that the Respondent acquired the name when it fortuitously came up for sale, that the disputed domain name consists of ordinary words over which no-one has a monopoly, that it has regularly registered generic domain names to aim at or do damage to the Complainant and that it has used the disputed domain name to conduct a legitimate business. All of these factors tend to tilt the scales in favour of the Respondent and are inconsistent with its having acted in bad faith. ”

“Stripped to its real essence, this proceeding is one where the Respondent has run a pay-per-click site of a general nature by using a generic domain name and promoting goods and services that are not associated with the Complainant’s industry. That is not evidence of bad faith.”

“Nor is it evidence of bad faith that the Respondent used a Privacy Service, as the reasons for using one are valid and its use has not prevented the Complainant from prosecuting this claim.”

“Accordingly, the Panel finds that the disputed domain name was not registered or used in bad faith.”

On the question of laches, the Panel merely wishes to say that as a result of the decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045, laches is “a valid defence in any domain dispute where the facts so warrant.” In the present case, however, the Panel is of the view that the case should be decided on the substantive issues already expounded and that it is unnecessary to go into a long discussion on whether the facts warrant a finding on the issue of laches.”

“Stripped to its real essence, this proceeding is one where the Respondent has run a pay-per-click site of a general nature by using a generic domain name and promoting goods and services that are not associated with the Complainant’s industry. That is not evidence of bad faith.”

Interestingly as long of a decision as this case is, and by UDRP standards its quite long, nowhere did I read in the decision even a mention of the IndianOil.Org case which was decided two months ago.

In that case the same complainant was awarded the domain based off of the same trademark and set of facts as the current situation (a parked domain), with a couple of differences.

Here there was a three member panel while in IdianOil.org there was a one member panel and here the domain holders were well represented while in the IndiaOil.org case no response was filed.

 

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