WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lohia Corp Limited v. Lohia Brass Private Limited/ Pyush Lohia
Case No. D2013-2095
1. The Parties
The Complainant is Lohia Corp Limited of Kanpur, Uttar Pradesh, India, represented by Subramaniam & Associates, India.
The Respondents are Lohia Brass Private Limited (the “first Respondent”) and Pyush Lohia (the “second Respondent”) of New Delhi, India, represented by Ritu Singh Mann, India.
2. The Domain Name and Registrar
The disputed domain name <lohia-group.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 16, 2013, the Center informed the Complainant that its Complaint was administratively deficient and invited it to file an amended Complaint. On December 18 and 20, 2013, the Complainant filed an amended Complaint with the Center.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2014. The Response was filed with the Center on January 11, 2014.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 21, 2014. 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.
On February 13, 2014, the Complainant made an unsolicited supplemental filing commenting on the Respondent’s allegations in connection to other legal proceedings between the parties.
4. Factual Background
The Complainant Lohia Corp Limited (formerly known as Lohia Starlinger Private Limited) is part of a group of companies based in Kanpur, India and was incorporated in the year 1981 and is currently active in manufacturing and selling machinery, mechanical sub-contracting, textiles and engineering plastics. Other companies of the group are: Lohia Engineering Works, Injectoplast Pvt. Limited, Threads India Limited, Precitex Components Manufacturing Company, Lohia Packing Machines Ltd., Lohia Sales and Services Ltd., Hargovind Bajaj Research and Development Center and Divine Wellness Pvt. Ltd. The Complainant’s group trades under the trademark LOHIA GROUP, and has a logo with a capital “G” in a stylized manner with the words “Lohia Group” written beneath. Its registered trademarks are:
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA GROUP (Logo) | Class 7 | 507565 | March 27, 1989 | Registered |
| LOHIA GROUP (Logo) | Class 23 | 626913 | May 2, 1994 | Registered |
| LOHIA GROUP (Logo) | Class 18 | 626914 | May 2,1994 | Registered |
| LOHIA GROUP | Class 22 | 626750 | April 29, 1994 | Registered |
| LOHIA GROUP | Class 23 | 626751 | April 29, 1994 | Registered |
| LOHIA GROUP (Logo) | Class 22 | 626915 | May 2,1994 | Registered |
| LOHIA GROUP (Logo) | Class 23 | 627230 | May 4, 1994 | Registered |
| LOHIA GROUP | Class 22 | 1794046 | March 9, 2009 | Registered |
| LOHIA GROUP (Logo) | Classes 6, 9, 12,13,16 & 37 | 1700924 | June 19, 2008 | Registered |
| LOHIA GROUP | Classes 6, 9, 12,13,16 & 37 | 1882600 | November 10, 2009 | Opposed |
The first Respondent is part of a group of companies promoted by family members of the second Respondent and is based in Noida, India. The companies of the Respondent’s group are: Lohia Sheet Products, Lohia Brass Pvt. Ltd., Lohia Developers (India) Pvt. Ltd., Lohia Hotels Resorts Pvt. Ltd., Lohia Energy Pvt. Ltd., Lohia Organic Farms & Bio Pvt. Ltd., Lohia Gramin Vikas Pvt. Ltd., Lohia Infrastructure Pvt. Ltd., Lohia Minerals & Mines Pvt. Ltd, Lohia Gypsum Board Pvt. Ltd., Lohia Agri Foods Pvt. Ltd., Lohia Auto Pvt. Ltd., Lohia Warehouse Pvt. Ltd., Lohia Auto Industries, Lohia Solar Cube India Pvt. Ltd., Designco (Partnership firm), Designco Overseas Pvt. Ltd. and Olympia Fitness Pvt. Ltd. The Respondent uses a spiral logo as its trademark with the word LOHIA written beneath the spiral device. The Respondent’s companies have applied for trademark registration for the marks LOHIA and LOHIA GROUP, details of its company – wise trademark applications are:
TRADEMARK APPLICATIONS OF LOHIA AUTO INDUSTRIES
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA (Word) | 12 | 1593356 | August 13, 2007 | Opposed |
| LOHIA (Word with Device) | 12 | 1735093 | September 22, 2008 | Pending |
| LOHIA GROUP (Word) | 12 | 1818822 | May 15, 2009 | Pending |
| LOHIA GROUP (Word with Device) | 12 | 1818823 | May 15, 2009 | Pending |
TRADEMARK APPLICATIONS OF LOHIA DEVELOPERS (INDIA) PRIVATE LIMITED
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA (Word with Device) | 37 | 1719016 | August 7, 2008 | Pending |
| LOHIA (Word with Device) | 36 | 1719017 | August 7, 2008 | Pending |
| LOHIA GROUP (Word) | 36 | 1818824 | May 15, 2009 | Pending |
| LOHIA GROUP (Word) | 37 | 1818825 | May 15, 2009 | Pending |
LOHIA BRASS PRIVATE LIMITED
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA (Word with Device) | 6 | 1719011 | August 7, 2008 | Pending |
LOHIA HOTELS & RESORTS PRIVATE LIMITED
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA (Word with Device) | 42 | 1719012 | August 7, 2008 | Pending |
LOHIA GYPSUM BOARD PRIVATE LIMITED
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA (Word with Device) | 19 | 1719013 | August 7, 2008 | Pending |
LOHIA ORGANIC FARM & BIO BOARD PRIVATE LIMITED
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA (Word with Device) | 04 | 1719014 | August 7, 2008 | Pending |
LOHIA ENERGY PRIVATE LIMITED
| TRADEMARK | CLASSES | NUMBER | DATE | STATUS |
| LOHIA (Word with Device) | 40 | 1719015 | August 7, 2008 | Pending |
The Complainant sent a cease and desist notice dated July 21, 2008 to Lohia Auto Industries, requesting the Respondent’s group to stop using its trademark LOHIA GROUP. The Complainant subsequently filed a Civil Suit No. 121 of 2008 before the Additional District Judge Kanpur for a permanent injunction restraining Lohia Auto Industries and its affiliates from using the trademark LOHIA GROUP. By an order dated September 5, 2013, the District Court of Kanpur granted the Complainant the relief of permanently restraining the Respondents from using the trademark LOHIA GROUP.
The Respondent registered the disputed domain name <lohia-group.com> on August 22, 2008 (Annexure A showing the “WhoIs” search report for the disputed domain name filed with the Complaint). The disputed domain name was therefore registered one month after the Complainant had sent the notice. The Respondent has also filed several trademark applications for the trademarks LOHIA and LOHIA GROUP subsequent to the date of the Complainant’s notice to the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant states it is the flagship company of the “Lohia Group”, and that the group is in the business of manufacturing and selling machinery, mechanical subcontracting, textiles and engineering plastic products. It claims to have achieved excellence in the area of extrusion plants, weaving, winding, laminating, printing, and other machinery for the plastic woven fabric industry. The Complainant states it has tremendous goodwill due to the quality standards it maintains.
The Complainant also has a manufacturing facility in China called Lohia Machine (Dongguan) Company Limited and a warehousing and engineering facility in Brazil under the name Lohia do Brazil Ltd. The Complainant’s United States Office, Lohia American Corp., is located in Miami and its other overseas offices are located in Indonesia and Thailand. The Complainant states it has a sixty percent market share in India and has the reputation of being the world’s leading manufacturer of such equipment and its projects are running successfully in over seventy countries with continuous attention given to quality and innovation.
The Complainant claims that in addition to having common law rights in the LOHIA GROUP mark, it has statutory rights in the mark and has filed certificates of trademark registration in India for the mark as evidence. Due to prior adoption, long extensive prior use, prior registration and extensive promotional efforts, the Complainant states the public associates the mark exclusively with its group and the trademark is well-known. The Complainant has furnished media references to its mark in various publications including reference to its mark in various journals as evidence of its mark being associated with Complainant and its group. The Complainant states it operates a website from the domain name <lohiagroup.com>, which was registered in 1998. The website is allegedly visited by hundreds of customers on a daily basis and the site has options of being viewed in five languages, viz. English, French, Portuguese, Spanish and Russian.
The Complainant states that Lohia Auto Industries, a company of the Respondent’s group, is an infringer of its trademark and has been permanently restrained from using the mark LOHIA GROUP by a judgment of the Additional District Court of Kanpur. The Complainant further submits that the disputed domain name is causing confusion as to its source. As evidence of such confusion having previously arisen between the Complainant and the Respondent’s group, the Complainant refers to a case filed in the Western District of Texas, San Antonio, United States of America, naming the Complainant’s companies as parties to the dispute instead of the Respondent. The case was against Big Lots Stores, Lohia Corp Limited, Lohia Starlinger Pvt. Limited and Bureau Veritas Consumer Products Services Inc. by L. […] Mejia individually and on behalf of her son’s estate, who had died due to injuries of an article manufactured by Design Co., a company affiliated with the first Respondent. The Complainant states it had to file an affidavit stating that it had been erroneously impleaded in the case to obtain a dismissal order from the court, as it was not the proper party.
The Complainant argues that the disputed domain name has caused confusion to the general public and that such use of its trademark is to be considered infringing use of its mark, dilution and passing off. The Complainant asserts that the Respondent has intentionally adopted its trademark dishonestly and in bad faith to cause confusion and to trade off from the goodwill built by the Complainant. Furthermore, as the Respondent’s group has been restrained from using the trademark LOHIA GROUP by an order of the Kanpur District Court, the Complainant argues that the balance of convenience is in its favour and requests for the remedy of transfer of the disputed domain name.
The Complainant has not authorized the Respondent to use its trademark and the Respondents have no legitimate interests or rights in the disputed domain name. The disputed domain name is also redirecting traffic from the Complainant’s domain names and the disputed domain name has been registered and is being used in bad faith.
B. Respondent
The Respondent has submitted that the Additional District Judge, Kanpur Nagar, in the civil suit has given a clear finding that there is no similarly between the logos of the two parties and the Respondent has not used any trademark or device mark similar to the logo of the Complainant. The Respondent states the first firm of the Respondent’s group was established sometime in the 1960s by the great grandfather of the second Respondent and was called M/s Lohia Industries. The Respondent has filed a copy of a letter issued by the General Manager, District Industries Center, Moradabad, in the name of M/s. Lohia Industries, showing it was registered as a Small Scale Industry in 1971. The Second Respondent belongs to the sub caste “Lohia” and uses the surname “Lohia”, and the Respondent adds that other members of the Second Respondent’s family also use the surname. The Respondent argues that its adoption and use of the name “Lohia” including the use of “Lohia” in the disputed domain name is legitimate as its first use of the “Lohia” name goes back to the sixties when the Complainant did not exist.
The Respondent states it has filed trademark applications for the name “Lohia” and “Lohia Group” under various classes. The Respondent has filed copies of advertisements and invoices to establish that the spiral device mark has been used by Lohia Auto Industries. The Respondent further argues that the areas of business of the two parties are entirely different as detailed in their respective websites. Given the difference in their logos and their products and services, the Respondent argues that the likelihood of confusing similarity does not exist or is extremely remote.
The Respondent further alludes to rectification petitions that it has filed and states that the Complainant has failed to disclose that a rectification petition has been filed by Lohia Auto Industries, a company of the Respondent’s group, against the Complainant’s trademark registration No. 6272301 in class 23 for the trademark LOHIA GROUP. The Respondent further adds that it intends filing a rectification petition for the Complainant’s trademark registration No. 1794046 in class 22 in respect of the mark LOHIA GROUP and that it has filed a rectification petition against the trademark registration No. 1882600 in classes 6, 9, 12,13, 16 and 37 relied on by the Complainant, which is pending decision.
The Respondent states that it has filed an appeal against the judgment of the Additional District Judge Kanpur Nagar in Suit No.121/2008 before the High Court of Allahabad. The Respondent further states that there are certain discrepancies in the translated version of the judgment. The Respondent also relies on an admission recorded in an interim order of the said civil suit, where it has been stated that the Complainant had no objection to the Respondent’s group company, Lohia Auto Industries, using the word “Lohia” for its business but is restrained from using the Complainant’s logo and the words “Lohia Group”. The Respondent contends that the Complainant has concealed this relevant point in the Complaint. The Respondent has also relied on a judgment of the Allahabad High Court of August 26, 2009 where it has successfully appealed against an interim order dated January 27, 2009 of the Kanpur District Court.
The Respondent contends it has rights in the disputed domain name, for the reasons that: it was not aware of the existence of the Complainant when it registered the disputed domain name. The disputed domain name is comprised of two common words “Lohia” which is the sub caste to which the Second Respondent belongs and the common word “group”. Some of the companies of the Respondent’s group were incorporated using “Lohia” as part of their name much before the present Complaint was filed. The Respondent denies the disputed domain name has been registered and used in bad faith, as the Respondent was not aware of existence of the Complainant and its companies till 2008 when a legal notice was served on the Respondent. The Respondent further states that its group has for long been known as “Lohia Group” and has filed newspaper reports and articles published in leading papers referring to its group as “Lohia Group”.
The Respondent states that its group has been legitimately using the website at the disputed domain name in course of their business. With respect to their goods and services, there is absolutely no commercial intent or purpose on the part of the Respondent. The Respondent states it has been using the disputed domain name and several other domain names containing the word “Lohia” such as <lohiaauto.com>, <lohiawarehouse.com>, <lohiabrass.com> since 2007 and there was no objection till it received the legal notice from the Complainant in 2008. The Respondent states that the Complainant’s concession recorded in the interim order of the civil suit that the Respondent are entitled to use the word “Lohia” establishes that it has rights and interests in the disputed domain name.
The Respondent further argues that the Complainant has not alleged in the Complaint that the Respondent has registered the disputed domain name for selling or renting it and therefore the Respondent’s adoption of the disputed domain name was bona fide without knowledge of the Complainant or its business interests. The Respondent further argues that the Complainant has filed trademark applications in classes 6, 9, 12, 13, 16 and 37 only after the year 2008 under application numbers 1700924 and 1882600. These applications, according to the Respondent, are for goods and services in which the Complainant does not deal in based on the material from the Complainant’s website. The purpose of such trademark applications by the Complainant, according to the Respondent, is with a view of creating a dispute with the Respondent.
The Respondent argues that it has not indulged in any activity to hamper or dispute the bona fide use of any trademark / domain name by the Complainant. The Complainant has failed to demonstrate likelihood of deception among the purchasing public. The Complainant is in the business of manufacturing threads, yarns, sack weaving machines and other products, which are different from the Respondent’s products such as home decoration products, automobiles, brass mental sheet, real estate and construction services. As the products and services of the parties and their group companies are very distinct and different, consumers are not likely to be deceived by the Respondent’s adoption of the disputed domain name, argues the Respondent.
Alluding to the complaint filed in the United States Western District of Texas, the Respondent states that an overzealous, careless and indiscriminate plaintiff has tried to file an action against every possible entity with the word “Lohia” found on the Internet. The Respondent argues that the case of L. Mejia is a “freak and a stand-alone case” that cannot be relied on by the Complainant to establish deception or confusion. The Respondent finally states that the allegation of a likelihood of confusion is non-existent as there is no similarity in the logos or goods and services of the parties and therefore no deception can be caused to the purchasing public and requests for denial of the Complaint.
6. Discussion and Findings
The Policy under paragraph 4(a) stipulates that the Complainant must establish three elements in these proceedings in order to obtain the remedy of transfer of the disputed domain name.
(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 was registered and is being used in bad faith by the Respondent.
A. Procedural Matter: Supplemental Filings
Without an express provision made for Supplemental Filings by either party under the Rules stating only a submission of a Complaint by the Complainant and a Response by the Respondent, the Panel has the sole discretion to decide whether or not to consider and/or admit further documents submitted by the parties pursuant paragraph 10(d).
In light of the above, the Panel has decided not to consider the Complainant’s Supplemental Filing when rendering its Decision.
B. Identical or Confusingly Similar
The first requirement of paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Complainant has filed conclusive evidence of its rights in the trademark LOHIA GROUP by filing details of its trademark registrations. The evidence filed by the Complainant shows that the Complainant has used the trademark for more than twenty-five years. Further, the findings of trial court, the Additional District Court, Kanpur Nagar, in India, in the civil suit has also found the Complainant has incontrovertible rights in the trademark LOHIA GROUP. Accordingly, the Panel finds that the Complainant has established its rights in the LOHIA GROUP mark in these proceedings for the purpose of the Policy.
The Respondent has argued that the logos of the parties differ and therefore the likelihood of confusing similarity does not exist. Logos or device marks are not typically significant for evaluating domain name confusing similarity, as design elements of a trademark cannot be reproduced in a domain name. See Accor v. Above.com Domain Privacy, David Smith / Domain Admin Huanglitech, WIPO Case No. D2012-0272. The Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark. The addition of the hyphen between the words “lohia” and “group” is of little significance as the disputed domain name virtually reproduces the entire trademark of the Complainant.
The Panel finds that the Complainant has established that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has successfully established the first element under paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Policy provides a non-exhaustive set of circumstances under paragraph 4(c) by which a respondent may demonstrate rights or legitimate interests, these are:
- Before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
- You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
The Respondent has stated that the registration of the disputed domain name was bona fide and was done without knowledge of the Complainant or its business. The Panel finds the Respondent has registered the disputed domain name on August 22, 2008. The Complainant has sent a cease and desist notice to the Lohia Auto Industries, a company affiliated with the Respondent, on July 21, 2008, which is about a month prior to the registration of the disputed domain name. As stated before, the Respondent has also filed several trademark applications for the trademarks LOHIA and LOHIA GROUP subsequent to the date of the Complainant’s notice to the Respondent. The Respondent’s submission that it had no knowledge of the Complainant is therefore untenable to this Panel, as the Respondent has registered the disputed domain name after being put on notice.
The Respondent has argued that it has used the name “Lohia” in connection with several of its companies and the earliest use of such a business name by the Respondent goes back to the 1960s. The Respondent has also argued that it has been recorded in an interim order before the court in Kanpur that the Complainant has no objection to the Respondent’s use of the name “Lohia” and that there has been no objection to its use of other domain names containing the word “Lohia” such as <lohiaauto.com>, <lohiawarehouse.com>, <lohiabrass.com> till it received the legal notice in 2008. These arguments extended by the Respondent would have been valid if the proceeding was concerning the use of the name “Lohia”. However the issue here is whether the Respondent has rights to use the term “Lohia Group” in the disputed domain name. The arguments are of no assistance to the Respondent’s case for this Panel as the present proceeding is not with regard to the use of the name “Lohia” per se.
The Respondent has submitted that the name “Lohia” signifies a sub caste to which the second Respondent belongs, and the disputed domain name comprises of two generic terms “lohia” and “group” and on the basis of this submission the Respondent argues that it has rights in the disputed domain name. The Panel finds the argument presented by the Respondent that the terms “lohia” and “group” seem to be used by the Respondent and also by the media when referring to the Respondent’s group as only a descriptive designator that refers to the Respondent’s group of companies in a collective manner and not as a designator of source of trade or commerce. The mere registration of a domain name that is comprised of generic terms may not establish rights or legitimate interests in favour of the Respondent, particularly when it has been established by the Complainant that it has acquired rights in the said generic terms and the words have acquired secondary meaning.
Regarding the Respondent’s contention that its group has for long been known as “Lohia Group” on the basis of evidence of newspaper items and articles in leading papers referring to its group of companies as “Lohia Group” , the Panel finds the news items that have been filed as evidence by the Respondent are from: “The Tribune” dated April 7, 2008; “The Assam Tribune” dated November 15, 2008; “Business Standard” dated May 21, 2008; “Live Mint” dated November 14, 2008; “Economic times” dated May 26, 2011; “Business Standard” dated May 26, 2008, which are newspaper reports and articles all dated 2008 and later. Further, the Panel notes the findings of the trial court in Kanpur shows the publications in the newspaper’s articles referring to the Respondent as the “Lohia Group” has led to confusion among the public. It is therefore doubtful whether the Respondent has been commonly known as the “Lohia Group” particularly prior to 2008. As the Respondent’s registration of the disputed domain name was also in 2008 the Respondent’s contention that it has been known for long by the disputed domain name is contrary to the Respondent’s submission and the evidence that it has been presented.
In view of the above, this Panel finds that the supporting evidence provided by the Respondent that it has been known commonly as “Lohia Group” by the media or that the public knows the Respondent as “Lohia Group” is insufficient. The Respondent’s application for the registration of the disputed domain name and trademark LOHIA GROUP appears to be after being put on notice by the Complainant. Furthermore there is a clear finding of the trial court that the Respondent has no rights in the term “Lohia group”, which is the trademark of the Complainant.
It is found by this Panel that the Complainant has put forward a prima facie case that the Respondent lacks rights of legitimate interests in the disputed domain name which, in the Panel’s view, the Respondent has not successfully rebutted. The Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.
The Policy under paragraph 4(b) has set forth a non-exhaustive list of various circumstances that constitutes bad faith registration and use of the disputed domain name. As argued by the Respondent, the Complainant has not suggested under paragraph 4(b)(i) of the Policy that the Respondent has registered the disputed domain name for purposes of selling or transferring it for valuable consideration in excess of out of pocket costs. Neither has the Complainant argued under paragraph 4(b)(ii) of the Policy that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the mark from reflecting it in a corresponding domain name. The Complainant has not argued that the Respondent has registered the disputed domain name for disrupting the business of the Complainant under paragraph 4(b)(iii).
The Complainant has stated that the Respondent is trying to divert Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement under paragraph 4(b)(iv) of the Policy.
The Complainant has asserted that the Respondent by registering the disputed domain name has engaged in unfair business practice and is tarnishing its reputation and is diluting its trademark. The basic purpose of the Policy is to prevent abusive domain name registrations typically by cybersquatters and is not intended for dealing with issues related to unfair competition or unfair business practices.
While the facts and circumstances of the present case are not that of a typical cybersquatting case, the Panel has carefully gone through the submissions made by the parties and the documents presented as evidence by both sides. The facts show the Complainant was the first to adopt and use the trademark LOHIA GROUP as its house mark and has extensively used the mark in commerce, popularized it and built up substantial goodwill. Clearly the Complainant is the prior adopter of the trademark LOHIA GROUP and has been aggrieved by the Respondent’s use of the mark and the resulting confusion. Although the Respondent has argued that the registration of the disputed domain name was bona fide and without knowledge of the existence of Complainant or its business interests, as discussed in the section above, this statement appears to be at variance with the facts and evidence on record. The Panel finds the Respondent has registered the disputed domain name most likely with knowledge of the Complainant’s trademark.
The Panel also notes that the verdict of the Additional District Court of Kanpur in India is based on the numerous instances of confusion among the public due to the Respondent’s use of the LOHIA GROUP trademark. The Complainant has presented convincing documentary evidence of confusion having arisen between the Respondent’s group and the Complainant’s group. The Panel finds this persuasive evidence that the public associates the trademark LOHIA GROUP with the Complainant and its group of companies and that the Respondent is using the disputed domain name in bad faith.
The Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain name in bad faith and is using the disputed domain name in bad faith2.
7. Decision
The Panel finds the disputed domain name is confusingly similar the trademark in which the Complainant has rights. The Respondent lacks rights or legitimate interests in the disputed domain name and the disputed domain name has been registered in bad faith and is being used in bad faith. The Complainant has established the three elements required under paragraph 4(a) of the Policy.
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 <lohia-group.com> be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: February 14, 2014
1 The Respondent appears to state by error trademark registration No. 627230 in its Response, but Annex R-7 to the Response shows trademark registration No. 626751, the one under “pending rectification”.
2 The Panel clarifies that the observations made in this Decision are limited to the present dispute with regard to the disputed domain name and shall not prejudice the rights of the Respondent in any pending cases, trademark applications and rectification petitions concerning the LOHIA mark.
