Aero Club of New Delhi, India, represented by Lall & Sethi Advocates, India was found guilty of Reverse Domain Name Hijacking (RDNH) by a one person UDRP WIPO panel on the generic domain name Woodland.com
Aero Club operates under the domain name woodlandworldwide.com which they registered in 2002 and tried to grab the shorter Woodland.com domain which was registered on November 26, 1999
“The Complainant is an Indian partnership, which commenced business with two retail outlets in New Delhi in 1992. It is engaged in the sale of footwear, casual wear and accessories under the name “Woodland”.
The Complainant is the registered proprietor of a large number of trade mark registrations featuring the name “Woodland” in one shape or form, some of them being WOODLAND word marks.
The territories covered by these registrations run mainly East from Eastern Europe, but the Panel noted a Norwegian registration, a Jamaican registration, a St. Lucian registration and a Venezuelan registration, a registration in the Dominican Republic and a few registrations in North and East Africa.
While the Complaint features a table listing the registrations, it does not date them. The earliest legible registration that the Panel has been able to locate from the voluminous annexes is Indian trade mark Registration No. 710548 dated July 23, 1996, for a device mark comprising the name “Woodland”, the device of a tree and the slogan “leather that weathers”. There is also Indian trade mark Registration No. 573949 dated May 25, 1992, for a device not legible in the exhibit, which the Complainant states is a device mark comprising the name “Woodland” and the device of a tree. For the purposes of this Decision, the Panel accepts that the 1992 registration is for the mark as described by the Complainant. Both registrations are in class 25 and cover footwear and other clothing.
The Complainant operates a website connected to its domain name,which it registered in 2002.
On January 31, 2013, the Complainant’s representatives wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights, accusing the Respondent of violation of those rights and demanding inter alia transfer of the Domain Name.”
“The Complainant’s contentions as to the Respondent’s bad faith intent at the time of registration of the Domain Name in November 1999 depend exclusively upon the Complainant’s claim that at that time the Complainant’s trade mark was not merely famous in India, but sufficiently famous for its fame not only to have reached the Respondent in Dallas, Texas, USA, but also to have motivated the Respondent to seek to exploit the value of the Complainant’s trade mark by way of the Domain Name.
The Complaint contains the following claims relating to the fame of the Complainant’s trade mark:
“Through long established and widespread use in many countries of the world, the aforesaid trade mark of the Complainant enjoys worldwide reputation.”
“By virtue of extensive sales and sales promotion activities carried out by the Complainant internationally, the trade mark WOODLAND is exclusively associated with the Complainant and the Complainant alone and has acquired an enviable reputation and goodwill.”
By virtue of its extensive worldwide use, the Complainant’s trade mark WOODLAND has become a well-known trade mark and was also recognized by a court in India.”
“Furthermore, at the time the Respondent registered the Domain Name, the Complainant’s WOODLAND trade mark had acquired the status of a well-known mark.”
“Since the Complainant’s Mark is well-known and the Respondent has no rights in the mark WOODLAND, it is evident that the Respondent registered the said domain with the sole intention of making unlawful commercial gain.”
“It is precisely because of this association with Complainant’s Mark that the Respondent saw immense value in the Disputed Domain Name and registered it.”
“Given the fame of the Complainant’s Marks as a trade mark and domain name, it is not possible to conceive of a use by Respondents No. 1 and/or No. 2 of the Disputed Domain Name that would not constitute an infringement of Complainant’s rights in its Trade Marks.”
These are very powerful claims both as to the widespread fame of the Complainant’s trade mark and as to the bad faith of the Respondent, but they face some formidable obstacles.
First, the trade mark is an ordinary English dictionary word in common use in English-speaking countries and it is notorious that where a mark is an ordinary dictionary word it requires very substantial cogent evidence to demonstrate (a) that the Complainant’s trade mark has acquired a secondary meaning sufficient to displace its primary meaning and (b) that the allegedly offending use being made of the word/mark is likely to be taken to be a use of the Complainant’s trade mark with its secondary meaning and not a use of the word with its primary meaning. Mere unsupported assertions are not enough.
Secondly, when did the Complainant’s trade mark achieve its status as an internationally well-known, famous mark? For the Complaint to succeed under the Policy on this basis (i.e. the international fame of the Complainant’s trade mark), the Complainant has to establish, as it has asserted, that this status had been achieved by November 1999 when the Respondent registered the Domain Name. Evidence is needed as to the international fame of the Complainant’s trade mark at that date. Mere unsupported assertions are not enough.
Thirdly, the fame has to have been likely to have reached the geographical area where the Respondent resides, namely the USA. Evidence is needed as to the Complainant’s trade and/or promotional endeavours in the USA as at November 1999. Mere unsupported assertions are not enough.
Fourthly, if any of the above evidence is weak, the Complainant will have to produce strong, cogent extraneous evidence to show that despite any shortcomings in the primary evidence, the Respondent is likely to have acted in bad faith when registering the Domain Name (e.g., that he is prone to adopting the well-known trade marks of others for commercial gain).
A striking feature of the Complaint is that apart from the evidence as to the Complainant’s trade mark registrations and the cease and desist letter sent on January 31, 2013, the Complaint is almost entirely made up of unsupported assertions. The Panel was given no evidence as to the Complainant’s sales or promotional expenditure whether in India or anywhere else. Indeed, the Complaint and its annexes contain no sales or promotional figures, nor do they contain any examples of advertisements or any third party evidence of the fame of the brand such as press cuttings or industry awards.
Even if one were to assume from the volume of the Complainant’s trade mark registrations that a significant amount of international trade had been undertaken under the WOODLAND trade mark, the Panel has no information at all as to what the volumes were as at 1999 when the Domain Name was registered. Nor significantly is there anything in the Complaint to indicate that the Complainant has ever traded or attempted to trade in the USA. The Complainant has no trade mark registration in the USA and in the Complaint the USA is not one of those countries expressly identified as a place where the Complainant conducts business. Indeed, apart from references to the Respondent’s and the Registrar’s addresses, the USA is not mentioned anywhere in the Complaint.
Despite these gaping holes in the evidence, has the Complainant nonetheless produced a sufficiently significant incriminating piece of evidence to show that the Respondent was in fact aware of the Complainant’s trade mark in November 1999 and is likely to have targeted that trade mark when registering the Domain Name? No, the Complainant has not.
The Complainant has left it 14 years before lodging the Complaint, which does not put the Complainant in a good starting position. It has complained about the Respondent’s failure to respond to its cease and desist letter of January 31, 2013, but it seems that that letter which was sent by post and by email was directed to the wrong addresses (not those on the Registrar’s Whois database). It has been alleged that the Respondent has tried to sell the Domain Name for an exorbitant sum, but the Respondent denies the allegation and the Panel has been unable to find any evidence in the case file to support the allegation. Finally, the Respondent has produced evidence to show that the Respondent’s parking page, visible to visitors situated in India1, once featured a link to a site mentioning the Complainant’s trade mark and some competing trademarks. However, the date of that page was August 28, 2013 which hardly supports the Complainant’s contention that the Respondent was out to profit on the back of the Complainant’s trade mark when registering the Domain Name back in 1999.
The Respondent denies that it had any knowledge of the existence of the Complainant and its WOODLAND trade mark in 1999 when registering the Domain Name. The Panel has found nothing in the Complaint to call that denial into question. The Panel sees no reason why a web development company in Dallas, Texas should have been aware in 1999 of the existence of an Indian “Woodland” footwear brand of no known repute. In so saying, the Panel is merely observing that the Complaint contained no evidence of any repute.
The Complainant’s response to the Administrative Panel Procedural Order has thrown a little more light on the background, but nothing that assists in explaining why in 1999, when the Respondent registered the Domain Name, it should have been aware of the existence of the Complainant or its WOODLAND trade mark.
Annex C to that response constitutes 152 invoices for the Complainant’s “Woodland” product dating from November 1993 to May, 2001. All are to customers with addresses in India. The Panel was not able to find any invoice addressed to anyone outside India.
In this case, the Respondent has reacted with commendable restraint to the outrageously misconceived and unsupported allegations of bad faith directed at it and has not requested a finding of Reverse Domain Name Hijacking.
However, as this Panel recently stated in Timbermate Products Pty Ltd v. Domains by Proxy, LLC/Barry Gork, WIPO Case No. D2013-1603:
“For a finding of Reverse Domain Name Hijacking (“RDNH”) it is not necessary that the Respondent should have sought such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he is under an obligation to so declare in his decision. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”). For a finding under this head, the Panel must conclude that the Complaint was brought in bad faith whether to deprive the Respondent of the Domain Name or to harass the Respondent or for some other reason.”
As with the Timbermate case, in this case too, the Complainant’s representative has cited previous UDRP decisions in support of its case. One of those cases was Veuve Clicquot Ponsardin, Maison Fondée en 1722 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and one only needs to look at the facts of that case to see how different they were from the facts of this case. Unlike this case, the complainant’s trade mark was not a dictionary word and unlike this case it is apparent that the complainant produced a wealth of detail to substantiate the fame of its mark. Moreover, unlike this case, the evidence showed that the respondent was a serial cybersquatter.
Another case cited by the Complainant was Playboy Enterprises International, Inc v. Hector Rodriguez, WIPO Case No. D2000-1016, another case with a materially different factual background to this case. The domain names clearly targeted the complainant (<playboychannel.com> and <playboynetwork.com>), the complainant’s trade mark would have been very well-known to the respondent (both parties being USA residents) and the respondent’s explanation was found by the panel to lack credibility. Moreover, the evidence before the panel was such as to lead the panel to go so far as to state: “In this connection the Panel notes that in its opinion, the Respondent’s actions in registering and now retaining both of the contested domain names evince bad faith in violation of the Anti-Cybersquatting provisions of the Lanham Act (15 USC § 1125(d)(1) with various factors indicative of ‘bad faith’ given in 15 USC § 1125(d)(1)(B)(i) though limited by 15 USC § 1125(d)(1)(B)(ii).”
The above cases were not borderline cases.
They were very clear cases of cybersquatting. T
his case too is not a borderline case, but for a very different reason.
The evidence of bad faith registration is non-existent.
There is nothing in the evidence to establish the fame of the Complainant’s trademark outside India and even if one were to assume that the trade mark registrations were evidence of commercial activity of the Complainant under the “Woodland” trade mark in the territories covered by those registrations, the USA is not one of those territories nor are any of the territories of North America.
Moreover, the only registrations that the Panel has been able to discover from the annexes to the Complaint (many of which are not in English), which pre-date registration of the Domain Name, are the Indian registrations detailed in section 4 above and registrations in Sri Lanka and Thailand.
The Panel was less than impressed with the passage in the Complaint reading: “In light of the foregoing, Internet users are likely to believe that the Disputed Domain Name is related to, associated with, or authorized by the Complainant. Considering the Complainant already uses sites such as “www.woodlandworldwide.com”, the internet users would be confused into thinking that the Respondent enjoys authorization of the Complainant to do business.
It is precisely because of this association with Complainant’s Mark that the Respondent saw immense value in the Disputed Domain Name and registered it”.
When the Panel first read this, the Panel had assumed that the Complainant’s domain name woodlandworldwide.com pre-dated registration of the Domain Name.
It was only in response to a question in the Procedural Order that it transpired that the Complainant’s domain name was not registered until 2002.
The Panel fully appreciates that Internet users in territories where the Complainant’s trade mark is well-known may be confused by the Domain Name and that is a hazard for all owners of trade marks which are dictionary words, but the Complainant’s use of its domain name woodlandworldwide.com, which came into existence over 2 years after registration of the Domain Name, has no bearing whatever on the Respondent’s state of mind when it registered the Domain Name. The ambiguity evident in the above quote was unfortunate, particularly as the passage was in support of an allegation of bad faith against the Respondent.
Delay in filing a complaint under the UDRP is not necessarily fatal to the complaint, because there may be any number of understandable reasons for the delay.
For example, the complainant may have had no reason to be aware of the existence of the domain name in issue. In this case, however, as the Panel has found (on the basis of the evidence annexed to the response to Procedural Order No.1), by 1999 the Complainant’s WOODLAND trade mark was an established brand in the Indian sub-continent. In 2002 the Complainant decided for the first time to register a domain name featuring its WOODLAND trade mark. It registered woodlandworldwide.com.
Is it credible that the Complainant went straight for that domain name without first checking the availability of the Domain Name (<woodland.com>)? The Panel finds on the balance of probabilities that the Complainant was aware of the existence of the Domain Name in 2002 when it registered <woodlandworldwide.com> and knew then that it had no basis for attacking the Domain Name. The fact that a potentially objectionable advertising link appeared in August 2013 cannot, in the view of the Panel, in these circumstances sensibly be used to question the bona fides of the Respondent back in 1999.
Taking all the above into account, the Panel finds that in levelling manifestly wild and unsupported allegations of bad faith against the Respondent some 14 years after the Domain Name was first registered by the Respondent, the Complainant has brought the Complaint in bad faith and abused this administrative proceeding.
For the foregoing reasons, the Complaint is denied and the Panel makes a finding of reverse Domain Name Hijacking.