The WIPO panel found that Hakoba Lifestyle Limited tried to hijack the domain hakoba.com from Mukesh Shah in a UDRP complaint, WIPO Case No. D2017-0675.
The respondent won even though it offered to license hakoba.com for USD 500,000 because:
The panel wrote:
The Complainant is Hakoba Lifestyle Limited of Mumbai, India, represented by Vishal Rajkumar Sekhani, India.
The Respondent is Mukesh Shah of Floral Park, New York, United States of America (“United States”), represented by Steven Rinehart, United States.
The disputed domain names <hakoba.com>, <hakobasaree.com>, and <hakobasarees.com> are registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 9, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Response was filed with the Center on May 2, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on May 12, 2017. 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, an Indian company, trades under the name “Hakoba”, specialising in “embroidery sarees”, fabrics, laces and dress materials, and other fashion products.
The Complainant operates websites at “www.hakoba.in” and “www.pelhakoba.com”.
The Complainant owns United States registered trade mark no. 4822272 for the stylised term HAKOBA (the “o” is heart-shaped), filed December 7, 2004, registered September 29, 2015, in international classes 24, 25 and 26. The “first use in commerce” date was given as February 3, 2009. The “first use” date was given as 1961.
Pioneer Embroideries Limited (“Pioneer”) (an Indian company and part of the Complainant’s group) owns three Indian registered trade marks nos. 423501, 631293 and 417365 for the same stylised term HAKOBA, all filed on June 19, 2003, and registered in classes 24, 25 and 26, respectively.
The disputed domain names were registered on the following dates:
<hakoba.com>: August 5, 1998
<hakobasarees.com>: October 11, 2002
<hakobasaree.com>: September 27, 2006
The Respondent conducts business through two United States corporations, “Fujiyama Fabrics, Inc” and “Hakoba Sarees, Inc.” and has used the disputed domain names for websites offering “Hakoba sarees” for sale.
On June 26, 2013, the Respondent emailed the Complainant offering a “counter-proposal” whereby, amongst other things, the Respondent would licence the HAKOBA mark and the disputed domain name <hakoba.com> to Pioneer on certain terms including assignment of the HAKOBA mark to Pioneer once Pioneer had paid in aggregate USD 500,000 in licensing fees.
A summary of the Complainant’s contentions is as follows:
The Complainant invented the name “Hakoba” and first started using it in India in 1955. The Complainant has consistently used this term to advertise its goods and services.
The Complainant has owned a registered trade mark in India since 1961.
The mark HAKOBA is well known and exclusively associated with the Complainant. The Complainant has invested significant resources in establishing its rights in the name “Hakoba” and possesses substantial and valuable goodwill therein.
The disputed domain name <hakoba.com> fully incorporates, and is identical to, the Complainant’s trade mark, thereby causing a likelihood of confusion and infringing the Complainant’s trade mark.
The similarity is enhanced because the Respondent operates in a similar industry to the Complainant, including an Internet service. Both the Complainant and the Respondent share a base of potentially Internet-savvy customers who are interested in fashion and traditional apparel, and embroidery.
A Google.com search for “Hakoba” brings up both the Complainant’s site and the Respondent’s website at the disputed domain name <hakoba.com> on the first page of search results.
Registration of a domain name before a complainant acquires trade mark rights does not prevent a finding of confusing similarity.
The Respondent’s company opposed the Complainant’s United States trade mark application but the opposition was rejected by the United States Trademark Trial and Appeal Board (“TTAB”) on the basis that the Complainant’s first use of the mark in connection with fabric and trimmings preceded the first use by the Respondent’s company in connection with sarees.
The Respondent lacks rights and legitimate interests in respect of the disputed domain name <hakoba.com>. Mere registration of a disputed domain name, even one incorporating “a well-known word that appears in a dictionary”, does not by itself confer rights and legitimate interests.
It is not immediately apparent to visitors to the Respondent’s website that it is not operated by the Complainant. There is no disclaimer. The Respondent’s email address “[username]@hakoba.com” creates the strong impression that the Respondent is the Complainant’s employee or agent. Moreover, email intended for the Complainant may be sent to the Respondent by mistake.
The disputed domain names were registered and are being used in bad faith.
The Respondent’s USD 500,000 offer in June 2013 was exorbitant and unreasonable and constitutes a bad faith offer for sale under paragraph 4(b)(i) of the Policy. This is a higher amount than that offered in other cases where UDRP panels have found offers for sale to have been made in bad faith. The Respondent’s offer of “terms” was effectively the same as an attempt to sell the disputed domain name <hakoba.com> at a substantial and unreasonable profit to himself.
Certain UDRP panels have interpreted paragraph 2 of the Policy as an ongoing warranty that a domain name will not be used in bad faith. Here the Respondent has breached the Policy’s requirement not to infringe third-party trade mark rights despite becoming aware of the TTAB’s opinion in August / September 2014 which found that the disputed domain name <hakoba.com> was infringing the Complainant’s rights and dismissing the opposition by the Respondent’s company.
The Respondent’s registration and use of the disputed domain names disrupts the Complainant’s business and e-commerce website by diverting traffic from the Complainant to the Respondent and also interferes with the Complainant’s ability to promote its products under the HAKOBA mark.
Although residing in the United States, the Respondent is of Indian origin and his merchandise is focused on the Indian community. The Respondent is well aware of the Complainant’s brand but is nonetheless misleading customers by referring to plans to expand franchise stores not just in cities in the United States with large Indian populations but also in major cities in India.
The Respondent registered and used the disputed domain names to create confusion and the Complainant has suffered loss of business and goodwill as a result.
A summary of the Respondent’s contentions is as follows:
The Respondent registered the disputed domain names because of their descriptive meanings.
Dictionaries show that “hakoba saree” is a generic term. The word “saree”, also spelt “sari”, has been imported into English and means a cotton or silk garment worn by Hindu women. In India, the term denotes “embroidery”. The word “hakoba” means “good” in Gujarati. The combined term means “fine embroidery” or “good dress”.
There are many third-party websites which use the terms “hakoba” and “sarees” in such a generic / descriptive manner.
The disputed domain names have provided the Respondent’s primary source of income for 20 years.
The Respondent’s use of the expressions “hakoba” and “hakoba saree” pre-dates registration of the disputed domain names by several years. Newspaper cuttings and other documents dating back to 1998 demonstrate use of the terms by various companies of the Respondent as well as the generic nature of those terms.
The Complainant had no registered or common law trade marks when any of the disputed domain names were registered. The only registered trade mark asserted by the Complainant was issued in 2015, 17 years after registration of the disputed domain name <hakoba.com>.
The Complainant does not draw attention to the TTAB’s holdings. Amongst other things, the TTAB held that the Respondent had demonstrated its first sale of branded goods in the United States by February 3, 1999, predating the Complainant’s earliest use dates. The Respondent registered the disputed domain name <hakoba.com> a year before the first use date recognised by the court. (The Panel notes that this appears to be a misreading of the TTAB holding, confusing the identities of the “Opposer” and “Applicant”, and that the February 3, 1999 date in the holding refers to the Complainant’s first sale date in the United States and not that of the Respondent. However, the Panel does not address this issue further as it does not consider the TTAB holding to be relevant to this case, partly because it relates only to the United States.)
The Complainant sidesteps the issue of the registration date, falsely asserting that the Respondent registered the disputed domain names after the Complainant had acquired trade mark rights. Registration date of a disputed domain name before the Complainant accrued trade mark rights is a bar to recovery. (Again, this assertion appears to be based on a mistaken reading of the TTAB holding. See the Panel’s comment above.)
In any case, the Respondent registered the disputed domain names in good faith and none of the factors in paragraph 4(b) of the Policy apply.
The Complainant’s 19-year delay in asserting its rights in inexcusable and there is no reasonable explanation. The Complainant’s claims should therefore be barred on the grounds of laches.
The Complainant has ignored its three-pronged burden of proof and makes unsubstantiated allegations.
The Complainant is guilty of reverse domain name hijacking. It had no bona fide basis for commencing this proceeding. The Complainant knew that there was no plausible basis for a complaint.
The Complainant has established rights in the mark HAKOBA by virtue of its United States registered trade mark for the stylised term “hakoba”.
Disregarding the suffix, the mark is identical to the disputed domain name <hakoba.com>.
The mark is confusingly similar to the other two disputed domain names <hakobasaree.com> and <hakobasarees.com>, as these simply consist of the term “hakoba” plus the descriptive terms “saree” and “sarees”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
It is unnecessary to consider this element in light of the Panel’s conclusion below under the third element.
The documents produced by the Respondent show that, through two United States corporations, Fujiyama Fabrics, Inc and Hakoba Sarees, Inc., (the latter incorporated in 1999), the Respondent has been engaged in the supply of what it describes as “hakoba sarees” since around the time that it acquired the disputed domain name <hakoba.com> in 1998. The Respondent has used websites at the disputed domain names for that purpose.
The Respondent says that “saree” is a generic term meaning either a dress worn by Hindu women or simply embroidery and that “hakoba” in Gujarati means “good” or “fine”. He maintains that the combination of the two, “hakoba saree”, is also a common generic term, meaning simply “fine embroidery” or “good dress” and that that was the reason that the Respondent originally selected the disputed domain names.
The Respondent has produced an article from the News India-Times dated September 11, 1998, which quotes the Respondent as stating that Fujiyama Fabrics, Inc, specialises in “manufacturing Hakoba sarees, a special knitted variety suitable for both summer and winter wear, making it the only firm manufacturing hakoba sarees in the United States on a large scale”. This supports the Respondent’s contention that “hakoba saree” is generic, although it does muddy the water somewhat because the meaning given here is not quite the same as the one proposed by the Respondent above.
In any case, the Respondent has also produced extensive Google search results which indicate widespread third party use of the term “hakoba” in connection with “saree” in a manner which appears to be generic or descriptive rather than denoting the Complainant’s brand in particular.
The Complainant does not say much on the subject. It does claim at one point that it invented the name “Hakoba” but it arguably contradicts this by asserting elsewhere in the Complaint that, even a domain name incorporating a “well-known word that appears in a dictionary”, does not by itself confer rights and legitimate interests.
Weighing up all the evidence, it appears to the Panel that the words “hakoba” and “saree” are commonly used together in a generic and/or descriptive sense. And there is nothing before the Panel to indicate that the Respondent adopted the terms other than in such a context.
In particular, the Complainant has provided no evidence suggesting that the Respondent had the Complainant in mind when, in 1998, it registered the first of the disputed domain names and started using the name “hakoba sarees”. The Complainant’s United States trade mark was filed in 2004 and the Indian trade marks owned by the Complainant’s related company were filed in 2003.
The Complainant claims that it started using the name “Hakoba” in India as early as 1955 and the Complainant’s United States trade mark claims a “first use” date of 1961 but the Complainant has provided no evidence of any level of trading activity – either before or after registration of the disputed domain names.
One submission of the Complainant casts some degree of doubt as to the extent to which the Complainant’s rights do indeed pre-date those of the Respondent; the Complainant asserts that registration of a domain name before a complainant acquires (presumably registered) trade mark rights does not prevent a finding of confusing similarity. But the Complainant does not squarely address the issue.
The Complainant relies on the Respondent’s USD 500,000 “offer” of June 2013. However, the Panel does not consider that this assists the Complainant. That communication is in the form of a “counter-proposal” made in the course of settlement negotiations (full details of which have not been provided to the Panel) some 15 years after the first disputed domain name was registered and seven years after registration of the last one. This “offer” therefore gives little indication of the Respondent’s state of mind at the time of registration of any of the disputed domain names and, in any case, the Panel considers that it falls well short of constituting an unsolicited offer, such as would satisfy paragraph 4(b)(i) of the Policy.
For the above reasons, the Panel finds that the Complainant has failed to establish registration of the disputed domain name in bad faith. The Complainant has therefore failed to establish the third element under the Policy, which requires the Complainant to prove both registration and use in bad faith.
In the circumstances, the Panel has not considered it necessary to address the Complainant’s assertions regarding the alleged likelihood of confusion arising from the Respondent’s websites. Nor is it the role of the Panel to assess whether or not the Respondent may have infringed the Complainant’s trade mark rights.
The Panel would add that the UDRP is a proceeding with a limited scope and is not intended to cover every situation where parties with similar names come into conflict. The outcome of this case does not of course prevent the Complainant from pursuing a court case for infringement of its intellectual property rights if it considers that it has grounds to do so. Indeed, the Panel is aware that there has already been some legal skirmishing between the parties although the full details have not been provided to the Panel.
The Respondent argues that the Complainant has been guilty of RDNH.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
On balance, the Panel considers that a finding of RDNH is warranted in this case.
In particular, the Complaint has failed by a large and somewhat foreseeable margin; in the Panel’s opinion, the Complainant knew or at least should have known that it could not prove one or more of the essential UDRP elements. The Complainant’s representatives quoted extensively from UDRP case law and the Panel thinks it unlikely that they were unaware of the need to provide evidence to support their key assertions including as to the extent and history of the Complainant’s alleged use of its mark.
For the foregoing reasons, the Complaint is denied and the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Date: May 26, 2017