The Complainant is Nalli Chinnasami Chetty, India, represented by De Penning & De Penning, India.
The Respondent is Qun Ying Yuan, Huo Er Guo Si Shi Guo Po Sheng Wang Lao Ke Ji You Xian Gong Si, Cambodia.
The disputed domain name <onalli.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On May 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 5, 2020, 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.
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 May 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 10, 2020. 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.
Headquartered in Chennai, India, the Complainant is a leading manufacturer and merchant of clothing. The Complainant has been doing business for approximately 90 years in India and has expanded to other parts of the world during the last several years. Due to its continuous use of the trade mark on apparel in its business in India since 1928, the Complainant has acquired common law trade mark rights in the NALLI trade mark. The Complainant also owns many registered trade marks in numerous jurisdictions worldwide. Among them are the following: NALLI, Indian Trade Mark No. 472754, registered on February 15, 1993, in international class 24; NALLI, Indian Trade Mark No. 903811, registered on March 15, 2005, in international class 25; NALLI, United States Registration No. 2444608, registered on April 17, 2001, in international classes 24 and 25; NALLI (stylized), United States Registration No. 2100656, registered on September 30, 199,7 in international class 24; and NALLI (stylized), International Trade Mark 001373786, registered on March 7, 2005, in international classes 24 and 25 (collectively, the “NALLI Mark”).
The Complainant owns dozens of domain names, including, among others, <nalli.com>, <nalli.co>, <nalli.eu.com>, and <nalli.us.com>, which resolve to its official website at “www.nalli.com”.
The Disputed Domain Name was registered on December 12, 2019. The Disputed Domain Name resolves to an inactive error landing page with no content.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s NALLI Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i-iii)):
(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.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the NALLI Mark.
It is uncontroverted that the Complainant has established rights in the common law NALLI Mark based on its continuous use since 1928, and has also established rights in its numerous registered trade marks that incorporate the NALLI Mark. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the NALLI Mark. Further, the Complainant’s rights in its NALLI Mark have been recognized in a previous UDRP decision, in which the disputed domain name in that case, <nalli.net>, was transferred from the respondent to the complainant. See Nalli Chinnasami Chetty v. James H Park; WIPO Case No. D2017-1373.
The Disputed Domain Name <onalli.com> incorporates the Complainant’s NALLI Mark in its entirety preceded by the letter “o” and followed by the generic Top-Level Domain (“gTLD”) “.com”. The addition of a single letter to a disputed domain name does not prevent a finding of confusing similarity. See ALH Group Pty Ltd v. Naveen Mathur, WIPO Case No. D2015-2004 (finding the disputed domain name confusingly similar to the trademark despite the addition of the letter “s”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0 , section 2.1 .
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Further, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its NALLI Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the passive use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Moreover, the Respondent has not made use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bonafide offering of goods or services.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Disputed Domain Name was registered approximately nine decades after the Complainant first began to use the NALLI Mark as a common law mark and subsequently as a registered trade mark in numerous jurisdictions worldwide. The Panel finds it likely that the Respondent had the Complainant’s NALLI Mark in mind and thus knew (or should have known) of the registration and use of the NALLI Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name”).
Second, the registration of a domain name that is confusingly similar to a well-known trade mark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. Here, while it is not clear that the Complainant’s NALLI Mark is “well known” in the traditional sense, it is a brand that is likely known to individuals in Asia, where the Complainant’s business first began and the Respondent resides. Thus, the NALLI Mark appears to have been an attractive target for the Respondent. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a trade mark without a legitimate purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <onalli.com> be transferred to the Complainant.
Lynda M. Braun
Date: June 16, 2020
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