BJP.com A 14 Year Old Domain Is Taken in a UDRP Without A Registered Trademark
A one person panel just awarded a golden three letter domain to the complainant.
The domain name BJP.com and it was awarded to the Bharatiya Janata Party (BJP) of New Delhi, India
The complainant did not have a registered trademark on the domain name and the domain holder has held the domain since 1997.
Here are the relevant facts:
“The Complainant, Bharatiya Janata Party, is a leading political party in India, popularly referred to as BJP. The Complainant in alliance with other parties was in power between the years 1998 – 2004 with Mr. Atal Bihari Vajpayee as the Prime Minister and Mr. Lal Krishna Advani as the deputy. The Complainant is the biggest constituent of the National Democratic Alliance (NDA) that is currently the major opposition party in India. The Complainant owns the domain name <bjp.org> since the year 1995.
“The Respondent registered the disputed domain name <bjp.com> on October 30, 1997.
“The disputed domain name was directly linked to the website of All India Congress Committee (AICC) but is no longer linked to the AICC website. The Respondent’s website currently displays the message: “we will be back shortly with new look and feel, Bharath Journals and Publishers Team”.
Here is the relevant findings of the panel:
“The first element under paragraph 4(a) of the Policy requires the Complainant to prove the disputed domain name is identical or confusingly similar to a mark in which it has rights.
“The Complainant has provided documents that show extensive media coverage, unsolicited media references and published news reports referring to the Complainant as BJP over a period of time.
“The Complainant has provided evidence of third party websites and public websites that refer to the Complainant as BJP.
“Based on this material it is clear that the public has come to associate the term BJP with the Complainant’s political party through long and continuous use. The Complainant has therefore successfully established in these proceedings that it is extensively referred to as BJP by the media and by the public at large.
“The Panel therefore finds the Complainant has established that it has acquired distinctiveness and secondary meaning in BJP as an unregistered trademark.”
“”Under the Policy, social organizations such trade unions and political parties are recognized as having common law rights in their unregistered trademark based on length of use or of widespread use of their name.:”
“The Complainant has shown substantial use of the abbreviation BJP as a trademark in order to claim rights and secondary meaning in the abbreviation. The evidence provided by the Complainant include documents that shows the mark is widely used in an abbreviated form by independent commentators in the media and by the public that refer to the Complainant only by its abbreviated form. This is sufficient to establish trademark rights in the three-letter abbreviation of the Complainant’s name.”
“Based on the evidence and the facts and circumstances in the present case, the Panel finds the trademark BJP is well known in connection with the Complainant. The Panel finds the Complainant has established common law rights in its unregistered trademark BJP and that the Complainant has continuously and extensively used its BJP mark. The Panel finds the disputed domain name <bjp.com> is identical to the BJP mark in which the Complainant has rights.
For all the reasons discussed the Panel finds the Complainant has satisfied the first element under paragraph 4(a) of the Policy”
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainants to make a prima facie case that the Respondent lacks rights and legitimate interest in the disputed domain name. Once such a prima facie case is made, the burden shifts to the Respondent to demonstrate rights and legitimate interests in the domain name”
“The Complainant has argued that the Respondent has not used the disputed domain name for any legitimate activity except to create links to the Complainant’s rival political party and Respondent has not submitted sufficient evidence of bona fide legitimate activity under the name. As the Respondent is not authorized to use the Complainant’s mark, the Respondent has no rights or legitimate interests in the disputed domain name.”
“The Respondent has not filed any evidence in these proceedings to show that he had a business prior to 1997 to justify honest adoption of the name and registration of the disputed domain name. ”
“The documents submitted by the Respondent pertaining to its business is a certificate under Shops and Establishment Act dated July 2008. Further, there is no evidence on record to show that the disputed domain name was used during the period 1997 to 2008, and from this the Panel infers that the Respondent till 2008 passively held the disputed domain name. ”
“In its response the Respondent has stated that it proposes to the use of the website in connection with its business once the dispute is over. ”
“Exhibit A of the Respondent’s supplemental submission shows screen shots of the archived website linked to the disputed domain name. On scrutinizing these, the Panel finds that the screen shots show some advertisements for a Hindi film on December 10, 2008 and links to news items dated February 16, 2009 and February 17, 2009. What is significant is that there appears to be little no original content on the website. The Panel is not convinced that the screen shots of the Web pages provided by the Respondent show the Respondent runs a bona fide publishing business or has used the disputed domain name in connection with the said business. Further the purported documents showing use in connection with the publishing business is provided for a very short period of a few months, whereas the Respondent has held the disputed domain name for nearly fourteen years.”
“As rightly mentioned by the Complainant, no information or evidence about the nature of the Respondent’s business has been provided in these proceedings.”
“The Respondent does not mentioned what type of publishing business it runs, whether it is publishing books or does some kind of online publishing.”
“Nor has the Respondent provided any other evidence that may prove the existence of a bona fide business such as yearly accounts or a statement of turnover, the names of books or journals published by the Respondent. For the reasons discussed, the Panel finds that the Respondent has not established that it uses the disputed domain name in connection with a bona fide offering of goods and services.”
“Bad faith lies in the deliberate and misleading use of another’s trademark for the purpose of diverting Internet users looking for sites associated with the owner of that trademark to the respondent’s website.”
“The Panel finds the circumstances of this case show that the domain name was registered by the Respondent with an intention to attract Internet users to the Respondent’s website by creating a likelihood of affiliation with the Complainant’s well known mark and to mislead users.”
“The circumstances and evidence presented in the case indicate that the Respondent has registered the disputed domain name with the intention of attracting Internet users to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy.”
“The Respondent has argued it had no knowledge of the disputed domain name being linked to the congress party website and ascribes this misdirection due to hacking of its account. This argument seems unconvincing as the Respondent claims it runs its business from the website it is unlikely that it has not noticed that it has been directly linked to another site. This means one of two things that the Respondent is not actively using the disputed domain name and the website linked to the disputed domain name thereby any hacking or misdirection goes unnoticed by the Respondent or that the Respondent is willfully turning a blind eye to this misdirection from the disputed domain name. As the owner and registrant of the disputed domain name the Respondent has a continuing responsibility to ensure that the domain name does not infringe any third party rights or used in any improper manner.”
“The Respondent has owned the disputed domain name since 1997 and from the evidence it can be inferred that the Respondent did not actively use the disputed domain name. ”
“This can be inferred from the Respondent’s statement that it was unaware of the redirection of the disputed domain name to the Congress party website.”
“If the Respondent had indeed been using the disputed domain name in connection with a bona fide business, as it has asserted in its pleadings, it ought to have known about the misdirection to the website to the Congress party. ”
“Therefore the Respondent’s submission that it came to know of the hacking and misdirection after receiving an email from the Registrar indicates that the Respondent has passively held the disputed domain name. Further the Panel notes the current use of the disputed domain name is a passive holding as is evident from the message posted on the website and the Respondent’s admissions that it proposes to use the domain name as soon as this dispute is concluded. ”
Guys if you have a valuable domain name that is hit with a UDRP you HAVE to get a three member panel.
If you don’t this is what can happen
Loading ...
If Rick owned it he’d point it to BlowJobsPorno.com
@Back in the real world
These things are case-to-case, so one decision doesn’t necessarily dictate how another should turn out. If a BJP party in Timbuktu files a UDRP while bjp.com or its domain holder does nothing to possibly associate with that party like this one did, then the UDRP isn’t likely to succeed.
No Acro, if Rick Schwartz owned it he would have pointed it to BJPsucks.com which would have been scattered with links to porn, a few competing services, and a tagline saying DON”T MESS WITH THE KING YOU MORONS
lol Smoka_J, instead red bull?
Apparently no consideration was given by the UDRP as to the unregistered trademark status of “BJP” at THE TIME OF REGISTRATION (1997), instead a case was made by the complainants that the term BJP gained status “over a period of time.” This alone should be enough to fault the decision and refer it back for appeal with a larger panel, if this is possible. While BJP appears in some google archive news searches of 1995-7, it would be tough to declare it had achieved unregistered trademark status at that point, which should be the determining factor for this test. Think about the local 3-letter regional and local companies that could claim their unregistered names had achieve “trademark status” under this decision. There would go the bulk of trade and investment in all lll.com’s etc.
Jim
The domain registrant has the right to ask for (a pay for) a three member panel.
If the domain holder fails to do so, then the case decided by the one panelist
Under the UDRP the panelist has to make a decision he doesn’t have the choice to kick it back to larger panel.
Hello:
First – 3 member panel should be mandatory to protect the little guy who doesn’t have and can’t
afford the big bucks like the big name domainers have.
Second – Most of these UDRP single member decisions have been subjective , arbitrary and
contradictory to say the least.
Third – The only way the small domainer is going to get any justice is for some of the big domainers
get hammered and lose some of their million dollar domain names to these arbitrary decisions and take a stand and clean up the UDRP Board and make them standardize their contradictory decisions.
I hear alot of talk on the blogs but don’t see much action from people who could and should be
doing something about it. Unless of course it’s to their benefit not to. Just a thought.
“Guys if you have a valuable domain name that is hit with a UDRP you HAVE to get a three member panel. If you don’t this is what can happen.”
Great advice from someone who can afford it.
Best Regards
Richard
Richard
Just like any other legal proceeding if you don’t have the money to put on a proper defense you usually lose.
“If another BJP based in another country, there are tons of them, had initiated this case do you think the result would have been the same?”
No.
I realize that people tend to boil these things down to “someone had a trademark claim for BJP and got the name bjp.com”, but that’s not accurate.
Had there been no evidence indicating that the domain registrant did not obtain and use the name for the manifest purpose of screwing around with the Bharatiya Janata Party, then that would be a different situation.
That is what makes trademark disputes fact specific.
The domain name had, in fact, been used for quite a long time by an English philosopher – David Pearce of Brighton – for a self-styled “Brighton Journal of Philosphy” from 1997 to roughly 2008. During that more than a decade of use of the domain name, the Indian political party had no complaint, no problem, no issue.
The domain name only became an issue when it was apparently acquired by someone in India for the apparent purpose of screwing around with the Bharatiya Janata Party. In response, the domain registrant gave a transparently lame excuse.
It’s not that the guy didn’t hire or couldn’t afford a good lawyer or anything else. It’s absolutely clear that the domain name was acquired and used for nefarious purposes in relation to an entity that is quite well known to the guy who was doing it.
And then he shows up, lies about how long he’s had the domain name and uses lawyers who don’t seem to exist.
How hard is that to figure out?
This is not rocket science. If Dr. Pearce was still using the domain name for his Brighton Journal of Philosophy, there would be no issue here.
Mr Berryhill,
Thank you for taking the time to answer the question.
I fully understand and agree with the decision, I just wanted your opinion on wether you thought another BJP complainant would win the UDRP based on the misuse of the doamin even though it did not affect them in the same way, which you answered.
Thank you very much.
“the unregistered trademark status of “BJP” at THE TIME OF REGISTRATION (1997)”
The first BJP prime minister of India was in 1996, Jim.
Well before that, the BJP had won the state assembly elections in Gujarat and Maharashtra (the second most populous state), and had obtained a substantial number of seats in Karnataka (the state where Bangalore is located – the domain registrants purported location).
But the domain name WAS NOT REGISTERED by this respondent in 1997. It was registered in 1997 by an English philosopher in Brighton who used it for the “Brighton Journal of Philosophy”. There is absolutely no problem with that.
THIS registrant, an Indian, in India, obtained the domain name in 2008 or 2009.
So, in the dispute between this complainant and this registrant, what does it matter who was doing what in 1997?
Did the new registrant continue the Brighton Journal of Philosophy? No. So the fact that it was used by somebody else for some other purpose prior to 2008 doesn’t matter.
What matters is what THIS GUY had in mind when he obtained the domain name in 2008.
And besides, Richard, having a 3-member panel isn’t a guarantee the respondent will necessarily win, either.
anyways, is it allowed to hire the lawyer/panelist to take the domain away?
BJP party just hired this lawyer to tkae the domain away and that’s all here. look at her trackrecord, 38 1-person panel judgements, verus 1 case when she was a a part of a 3person panel
I am amazed that not all panelists have access to DomainTools’ paid services, as Berryhill mentioned. How can they make decisions without proper access to whois history?
@johnberryhill thanks for the clarification. I took the facts of the article as accurate without having read your comments. Understood and agreed with your points, but very suspicious of a 1-person panel for any decision in any industry.
“anyways, is it allowed to hire the lawyer/panelist to take the domain away?”
Why not? UDRP allows complainants to opt for just 1, to 2, to 3 panelists if they see fit.
Perhaps fortunately, the same thing doesn’t have to happen to you if you don’t do what the respondent did in this case.
Dave
Actually the domain holder can choose and pay to have a three member panel, otherwise you get a 1 person panel
two is not an option
“I am amazed that not all panelists have access to DomainTools’ paid services, as Berryhill mentioned. How can they make decisions without proper access to whois history?”
The extent to which UDRP panelists should do their own fact finding is debated among panelists. Some believe that decisions should be based solely on the complaint and response filed by the parties. Some are often frustrated that the filings leave them with more questions than answers.
The hazard there is that a panelist may find something on his or her own, misinterpret it, and provide a decision based on arguments neither party made.
Oddly, while panelists have the ability to put questions to the parties, they rarely use it. But that can go to an extreme too. In one proceeding years ago, the panelist went through so many rounds of questions and answers that the both parties became so annoyed that they went ahead and settled on their own.
This is all wrong! If the owner was not using the domain to misrepresent the Indian party they should not have any rights.It’s like a celebrity fighting for a surname. example: I should have the right to own apple.com as long as I do not sale apple products,computers or display the apple logo without permission.Overall it’s their brand.The word is not theirs,the idea is.
How much does it cost to have a three seat panel?
Thank you.
Thank you, @ John Berryhill, for extensive input on the matter – enjoyable reading!
Please comment on the lying rep who claimed ownership for 14 years, as regards my take:
The mafia ICANN and Verisign are allowing insider Registrars to hire shills to represent domain names, who have little to do with that domain name, other than their info on the WhosIs, to hide their manipulating the domain name, such as selling it.
They manipulate the creation date on the WhosIs on registration of new domain names. I have been observing that in my research, and here is a fast proof:
The WhosIs on WeingerGate.com showed a creation date of:
05-27-10
until my conversation with Elliot Silver, here:
http://www.elliotsblog.com/oversee-missing-out-on-weinergate-2356
As confirmed by Elliot, that is what the WhosIs info showed. After that conversation, because it is so obvious a manipulation that it is evidence, the WhosIs got cleansed, so that the new creation date is:
31-jul-2011
according to the WhosIs for Weinergate.com:
Domain Name: WEINERGATE.COM
Registrar: DOMAINEVENT.CA, INC.
Whois Server: whois.domainevent.ca
Referral URL: http://www.domainevent.ca
Name Server: NS1.BODIS.COM
Name Server: NS2.BODIS.COM
Status: ok
Updated Date: 31-jul-2011
Creation Date: 31-jul-2011
Expiration Date: 31-jul-2012
while DomainTools still shows the original date as:
2010-05-27
This is what they do. The text message happened on 05-27-11. The domain was reserved, and zone files messed with to backdate the domain one year. This is the common thing I have been observing: backdating one year of recent domain registrations. But I brought it up on Elliot’s blog as proof of this practice, that weiner is a misspell of wiener. Noone would have registered, “Weinergate” until the event 05-27-11.
Verisign sells ConsoliDate, a service to consolidate the expiration dates of a portfolio to conform to one date, which is disadvantageous to the portfolio holder, in my view. For the same reason that they are able to manipulate the zone files of the expiration dates in a portfolio, Verisign is allowing this feature to be abused, so that it is deceptive as far as value, and as far as UDPR.
Your explanation about BJP.com was more evidence confirming the same: murky ownership, with strings pulled by powerful internet insiders who wish to remain anonomous.
On costs for the 3 member panels, it varies depending on what forum you’re using. At NAF, I think it’s the same as it costs for a complaint. At WIPO, I think it’s $1,500 for the respondent, then an extra $500 that the complainant has to pay (so it’s kind of a dirty way of forcing a complainant to pay more money. maybe not dirty if they’re trying to hijack, but, whatever).
I blogged about this case and I don’t see the big deal either. Mr. Berryhill was on the money in the comments above.
@ Louise
Yes, the domain name appears to have expired in May of 2011 (a year after it was registered), and after it dropped a different company picked it up. Since it dropped, it has a new creation date. As I mentioned before, you don’t seem to understand the domain lifecycle.
So where’s the future trend domains again ? These all look like current trends to me .
Oh I get it . . .back to the future trends auction !
@Louis
As Elliot suggested, quite often things which appear to be the result of interesting conspiracies have more mundane explanations.
The name in question was created in May 2010 for a term of one year. The name was not renewed, and the WHOIS history is consistent with a one-month registry auto-renew, followed by another month of redemption grace period and 5 day delete cycle, and was dropped at the end of July 2011 – and that means actually dropped from the registry. It was re-registered at that time, and has a new creation date. It looks like a perfectly normal registration cycle.
Now, sometimes you get mismatch between registrar and registry creation date data, as some registrar whois systems return the date at which it entered their database. Some of them used to do this, and so there are “baked in” wrong creation dates in archives of registrar whois data.
As to why someone would have registered the name in 2010, there are a number of reasons why that happens. If you want to see politically interesting domain names become registered from time to time, then watching the smarttechcorp.com nameservers can be fun.
Whoops… that’s smartechcorp.net
Hi @ John Berryhill, Thanx for responding! Your insights make theDomains rich.
Registrations getting back-dated a year or so I have noticed a few times, and thought this finally is concrete proof:
W-e-i ner is a misspell of w-i-e ner. Why would anybody register the misspell of a low value domain name on
THE EXACT DATE ONE YEAR PRIOR, 05-27-10
to the infamous tweet on 05-27-11
http://en.wikipedia.org/wiki/Anthony_Weiner#Resignation_from_Congress
about the person whose last name is spelled, W-e-i-ner?
You people can’t concentrate, because the salaciousness of it is too distracting! I hate that, but this is the evidence! Please look at it again:
http://www.domaintools.com/research/whois-history/?page=details&domain=weinergate.com&date=2010-05-27
The infamous tweet took a
This is the final thing I am going to say:
It’s a new form of “domain tasting.” Insiders at the Registry level test register a domain name, backdate it one year, and try to sell it. If it doesn’t sell, they allow it to “expire.”
Only in the case above, the insiders goofed to backdate such an obvious proof of their activity, and allowed it to “expire” for that reason, because I called it on Elliot’s Blog. Yes, the insiders read Elliots Blog and theDomains, and they are among us. I always suspected the lack of vertical separation between Registrar and Registry – this is further proof it doesn’t exist, whether official or not!
@Louise
You are as wrong as you are paranoid.
The first cache date at Domaintools is…..
——–
Cache Date: 2010-05-27
Registrar: NAMEKING.COM, INC.
Server: whois.nameking.com
Created: 2010-05-25
Updated: 2010-05-25
Expires: 2011-05-25
———
In other words, that is a copy of whois data which was stored by Domaintools’ system ON May 27, 2010.
It is not older data which has been “backdated”. It is a snapshot of data that was actually taken on May 27, 2010.
The creation date was 5/25, and I’ve walked through the sequence above.
I gather you went through this with Elliot already, and still don’t understand why you are wrong. So, it is unlikely that having it explained to you by someone else is going to help.