The Complainant is Nalli Chinnasamy Chetty, India, represented by DePenning & DePenning, India.
The Respondent is Netlas LLC, United States of America.
The disputed domain name <nalliplacementcentre.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2019. On October 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2019, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on June 8, 2019;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the 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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 7, 2019. 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.
The Complainant is a registered partnership established in India.
According to the Complaint, the Complainant was established in 1928 and has been trading since then in the manufacture and marketing of textiles and more recently clothing and fashion items. It has been using the trademark NALLI continuously since 1935.
The Complainant registered the domain name, <nalli.com>, in 1998 and has been using it to promote the sale of its products. In more recent years, it has expanded into sales outside India.
The Complainant has provided evidence of registered trademarks for NALLI in a cursive script in numerous countries around the world. These include:
(a) Indian Registered Trademark No. 472754 in respect of a range of goods in International Class 24 and which was filed on May 27, 1987 and registered on February 15, 1993;
(b) Indian Registered Trademark No. 903811 in respect of clothing and related goods in International Class 25, which was filed on February 16, 2000 and registered on March 14, 2005;
(c) European Union Trademark No. 001373786 in respect of goods in International Classes 24 and 25, which was filed on November 2, 1999 and registered on March 7, 2005;
(d) European Union Trademark No. 005690839 in respect of goods in International Classes 14, 20 and 24, which was filed on February 15, 2007 and registered on February 6, 2008;
(e) United States Registered Trademark No. 2,100,656 in respect of goods in International Class 24, which was filed on March 13, 1995 and registered on September 30, 1997; and
(f) United States Registered Trademark No. 2,444,608 in respect of goods in International Classes 24 and 25, which was filed on June 15, 1993 and registered on April 17, 2001.
The Registrar has confirmed that the disputed domain name was first registered in the Respondent’s name on June 8, 2019.
The Complaint includes a print out of the website to which the disputed domain name resolves. The top of the page includes a header which states that “The domain nalliplacementcentre.com may be for sale for USD 2100.00. Click here to purchase this domain.”
Underneath the disputed domain name in the form of a Heading is a smaller heading “Related Links” with links to “Job Placement Services”, “Madurai”, “Meilleur Placement Financier”, “Job Placements”, “Jobs India”, “Job Placement Agencies” and “Placement India”.
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
As the registration agreement and the website to which the disputed domain name resolves are in English, the language of the proceeding is English. See paragraph 11 of the Rules.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for NALLI referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
The disputed domain name differs from the Complainant’s trademark by the addition of “placementcentre” and the gTLD, “.com”.
The Complainant’s trademark, therefore, is plainly recognisable in the disputed domain name. Moreover, the addition of what is an essentially descriptive suffix to the Complainant’s trademark does not lead to a different conclusion. See WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not licensed or otherwise authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The use being made of the disputed domain name is not non-commercial.
The term “nalli” does not, so far as the Panel is aware, have any descriptive significance in relation to job placement. In addition, the disputed domain name is plainly not derived from the Respondent’s name. Moreover, it appears that the Respondent is offering the disputed domain name for sale and is, in the meantime, using the disputed domain name for pay-per-click (PPC) advertising.
The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
As the term “nalli” is not descriptive of job placement services and does not have any connection with the Respondent’s own name, it appears that the Respondent has adopted the disputed domain name because of its trademark significance.
The fact that the disputed domain name is offered for sale reinforces that conclusion.
In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has both registered and used it in bad faith.
Accordingly, the Complainant has established all three requirements under 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 <nalliplacementcentre.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: November 16, 2019
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