Zodiac is a generic term related to astrology but has been continuously used by the Complainant of Zodiac.in INDRP (.IN Dispute Resolution Policy) in its clothing business since 1961.
The Mumbai Based Complainant firm Metropolitan Trading Company got the Trademark registered for the Zodiac term not only in India but in various other countries as well. They have active website at ZodiacOnline.com and claimed in the INDRP that the term has acquired secondary meaning over the years in relation to their clothing business.
Whereas the Respondent had registered the domain name with the generic meaning of the term in the mind, in relation to some (future) Astrological Project in mind but the Domain Name has still been ordered to be transferred in the said INDRP proceedings. Therefore, it is quite important to analyze what exactly went wrong here and what future safeguards are available in order to protect your virtual assets in the circumstances of similar cases.
The following review of the Zodiac.in INDRP is voluntarily done by Mr. Ankur Raheja, Cyber Lawyer, Panelist & Arbitrator at request of DomainInsider.in team.
Now in an INDRP/UDRP proceedings for a complainant to be successful, as you are already aware, three conditions need to be satisfied, which are:
- Domain Name is identical or confusingly similar to a Trademark.
- Respondent has no rights or legitimate interests in the Domain Name.
- Domain Name has been registered and is being used in Bad Faith.
The first condition is prima-facie satisfied as the Domain Name incorporates the registered Trademark of the Complainant in it’s entirely, which is enough to satisfy the first condition as per numerous domain dispute decisions. And the Complainant seems to have accompanied the Complainant with proper documentary evidence.
Now, the next important factor is what legitimate use of the Domain name was being made in relation to its generic meaning. In fact, it was just parked with a sale offer and some advertisement links were appearing on the webpage. The arbitrator observed that Respondent registered the Domain name in 2010 but has not used or showed any intention to use the Domain name in connection with bona-fide offering of goods or services. The Respondent’s defense therefore appears afterthought.
Lastly, the Advertisements appearing on the said parked page, pertained to various third party websites dealing in garments (evident from the screenshot as well). The Complainant argued that the Respondent was originally providing links to third party websites who in turn were offering clothing and garments online, establishing beyond doubt that the aim and object of the Respondent was to encash upon the goodwill and reputation acquired by the Complainant in its trademark ZODIAC. The same has been upheld by the Arbitrator and as a result all conditions were satisfied by the Complainant and the order was for the transfer of the Domain Name.
But in no way, any weight was put on the generic meaning of the Domain name. Why?
The answer is simple, time and again the most common example used to discuss the legality of a parking of Domain name given is that of ‘Apple’, similar example is provided under UDRP Overview 2.0 (e.g., a respondent may well have a right to a domain name “apple” if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Also, it was even suggested during one of the DomainX by legal experts as well that never park a generic word like Apple.in, which will automatically display ADs of various similar products that of Apple and hence assumed as Bad Faith, no matter how the generic nature of the keyword contained in the Domain name is.
In a similar matter of RolexDealer.com (UDRP Case No. D2008-0396), it was held that “Even if the advertising links served up to visitors on the website associated with the Domain Name are automated, the Respondent remains responsible for the uses to which the Domain Name is put.” Similar position was held in the matter of Shangrila.com, JenniferLopez.net and so on. And in fact, there has been only one successful UDRP in the given circumstance that was UDRP Case No. D2006-1275 (Outside.com), wherein after receiving the notice from Outside Magazine, the Respondent made efforts to block appearance of ‘Outside Magazine’ links from appearing on its website. Otherwise, it has time and again decided against the Respondent as a bad faith.
Further in the latest UDRP matter of IntoCable.com (Case No. D2016-1048), which went in favor of the Respondent but infact in this matter also, similar circumstances have been analyzed before denying the Complaint, in favor of the Respondent. Wherein, it has been stated that “Respondent also indicated that the evidence submitted by Complainant, that the Domain Name is linked to a parking page, shows a landing page that does not display any pay-per-click links and does not reference Complainant or its music services.”
Further Panelist in the said matter of IntoCable.com said “Even if Respondent had been aware of Complainant’s trademark rights, this knowledge would not have necessarily prevented Respondent from registering the Domain Name in good faith for its common meaning, so long as the Domain Name is not used by Respondent in a manner that infringes upon Complainant’s trademark rights. Obviously, if Respondent attempts to use the Domain Name in relation to Complainant or related musical goods or services, Respondent would cross the line.”
Even the UDRP Overview 2.0 also states as follows in respect of domain names comprising of dictionary words:
“Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
Ofcourse, Zodiac.in, has been a tough decision against the Domain Owner but given the Domain Law and the precedents, the decision was on the correct lines, on well-established principles. Therefore, as soon as one acquires a domain name, it is necessary to do Due Diligence at one’s end and a small webpage should have been hosted with astrology information rather than Domain name being parked with Advertisement links appearing over it, over which one has no control.
In short, one needs to obey the law of the land. To take simple example, suppose if you buy an AUDI and it can zoom to the speed of 362 kmph but still we have to follow traffic law and within the city of Delhi, can’t race more than 50 kmph. That is, your rights are subject to the law of the land. Similarly, when you acquire a premium domain name which maybe based upon a dictionary word, you cannot deal with it as per your choice but you have to take Domain law and the precedents into account and make sure that you, directly or indirectly, are not violating any third party’s rights or the relevant mark !!!
DomainInsider.in team also reached out to Mr. Gaurav A. Kohli, the president of Domain Name Owners Association of India™ for his take on the transfer-away of generic Zodiac.in domain name in INDRP case. Mr. Kohli states, “The verdict emphasises the need for domain name investors to be aware of the use to which they have knowingly or unknowingly put their name and while unfortunate, it is an opportunity for the domain name industry to be cognisant of the laws and fundamentals on which INDRP decisions are based. The Domain Name Owners Association of India acknowledges this and will add more momentum to its activities that address the need for thorough domain name investor education.”
Rightly done? Contradicting views or opinion? Please feel free to share below.