Thread: Pantaloon goes after domain #6

I'm starting to lose track as to how many domain names Pantaloon has gone after. To say they are aggressive is an understatement. They recently won:

- BrandFactory.in
- Bare.in
- Rig.in
- All.in
- Umm.in

Many of these INDRP decisions have flaws. Honey.in is the latest domain Pantaloon has won, in what I consider another flawed decision.

In this case, Pantaloon owns trademarks for HONEY FRESH and HONEY SPORT but its claims to have also acquired *common law* rights over the generic term HONEY. However:

(1) the Indian trademarks registry indicates that other companies actually have trademarks for "HONEY" [it's hard to understand how these companies actually obtained such a generic trademark in the first place!]

(2) technically the respondent's use of "Honey" could easily refer to any of the other "Honey" trademarks mentioned at (1) above

(3) when I search for "honey" on Google India, there is not one result on the first page that relates to Pantaloon's goods.

Another major flaw is that the Arbitrator's findings do not discuss how Pantaloon has proved that the disputed domain name was registered in bad faith.

The respondent stated that it had a specific business interest and idea for this domain – i.e. it was going to set up a dating portal on Honey.in (this is a totally different area of use than Pantaloon's use for the term).

umm...

well lets leave it at that .win some lose some i guess

pity though ..nice name to loose

guess i must find some taker for attornies.info or criminallawyer.co.in

and be in the good books .!!>..<
[wouldnt mind being moved to apprisal!]

It's sad, but people shouldn't forget that there are a lot of bad UDRP cases. Here's another one - RuggedSwitch.com. The domain owner was using the domain to run a legitimate business that sold, well, Rugged Switches. Yet, he lost the UDRP.

Domain Name Wire ? News ? Refreshing Discourse from a Domain Name Arbitrator - The Domain Industry's News Source

There is also an interesting comment by Patrick McDermott:

within the last month I had read a warning that some companies are filing design trademarks that include a generic word(s) as a strategy to legally steal domains.

Once the design TM is approved, the company files a UDRP against the Registrant of the .COM domain containing the generic word(s) that are included in the TM.

The warning was included in a review of a UDRP case and decision similar to the one you wrote about above.

It’s a sneaky backdoor way to claim a trademark for a generic term that you really have no right to.

Since many Panelists are like Matthew S. Harris, the strategy can and has worked.

It's important to note that design marks are different than text marks and much easier to get, because they are accompanied by a design. However:

Design mark rights exist only in combination with the design. A domain name contains no design elements.

Originally Posted by Ceres

In this case, Pantaloon owns trademarks for HONEY FRESH and HONEY SPORT but its claims to have also acquired *common law* rights over the generic term HONEY. However:

Honey.in was an unfair decision. Regarding having a TM for HONEY FRESH and HONEY SPORT, what I noticed was that the tm was applied after domain name was registered.

Pantaloon's connection with the arbitrators needs to be examined.

--Ace

Originally Posted by Ace

Honey.in was an unfair decision. Regarding having a TM for HONEY FRESH and HONEY SPORT, what I noticed was that the tm was applied after domain name was registered.

Pantaloon's connection with the arbitrators needs to be examined.

--Ace

Ace, I totally agree with you that Pantaloon should not have been awarded this domain.

Yes, Honey.in predates the registration of Pantaloon's two trademarks. The decision does not make it clear, but I can only guess that Pantaloon's claim is that their so-called common law rights for the generic word "honey" existed before it even registered its two trademarks.

is honey more generic then virgin!@... link

if honey.in would have been an active site then it becomes more convincing/arguable case.
otherwise all UDRP/INDRP will be leaning to complainant!. however the generic nature does not confer it any immunity! its business my dear.considering honey.in was an active dating site.Then it would be difficult/almost impossible to win INDRP for it(exceptions do occur) IMO
also considering honey.in was regd @'05,pantaloons had a massive headstart in being present before and considering its huge presence in the apparel industry -bare.in was tbh foreseeable. honey a little less.
something like-ponds.in(no way a respondent will keep this if it goes to INDRP since ponds is a well known cosmetic product IMO)

Such decisions are shocking from a domainers POV but looking at the main picture of the business of it all @ well umm -...

I just found an article that confirms Pantaloon’s Honey brand existed in 2003, which is before the registration date of Honey.in

The Hindu Business Line : What women want

Pantaloon has three store labels, Honey (for 18-25 year olds), B.A.R.E. (casual wear) and Annabelle (more sophisticated attire for 26 years and above)

So this confirms that Pantaloon likely acquired Common Law Trademark Rights for HONEY before 2005.

Therefore, the important question:

- is Pantaloon's Honey brand so well-known in India that consumers would get confused and think there's a connection between Pantaloon's good/services and those offered by, say, Honey.in?

Answer: The fact that other 'Honey' trademarks have been allowed on the Indian trademarks register indicates that the answer is no. Therefore, Pantaloon has no exclusive rights over the use of Honey, except in respect of apparel and cosmetics etc.

That's how I read the situation. How about you?

Never heard of Pantaloon's Honey apparel. Very few Indian women wear branded clothes.

Originally Posted by dnk

Never heard of Pantaloon's Honey apparel. Very few Indian women wear branded clothes.

thats subjective, but my thoughts are, what if they stop manufacturing the honey branch?

Sorry to digress a bit but, how does a domainer defend a domain litigation if:
1. He does not live in India
2. Is not Indian by birth or does not have visa to go to fight these cases
3. The cost of defending is generally more than the purchase price of the domain (which can be even reg fees)

Given the above, if the domain owner is found to be in a difficult position like the above, is it easy to be a victim of such domain litigations?

Appreciate your thoughts.