Two Indian Companies Clash Over Domain Name

Ceres · #1 (**permalink**) 08-11-2009, 06:28 PM

The UDRP case regarding Nallis.com was heavily disputed, and the respondent lost this domain name.

Both the complainant and the respondent have trademarks in India for NALLI, which is a common surname in India (they also have trademarks in other countries).

Complainant: M/s Nalli Chinnasami Chetty, Chennai
The complanant's NALLI trademark has been used since 1935 in association with "clothing, footwear, headgear."

Respondent: Nalli's Silks Sari Centre
The respondent's NALLI trademark has been used since 1981 in association with "textile piece silk sarees."

Both companies are retailers of sarees/saris.

Although the respondent registered the domain Nallis.com about 10 years ago, the panel stated that it cannot claim a defence of laches in UDRP cases due to the "injunctive nature of the remedy for trademark violations."

The panel also found that the respondent lacked rights and legitimate interests in the domain name, even though it has been using its NALLI mark for approx 28 years

Quote:

It is unlikely that the Respondent was unaware of the fame and the pre-existing rights of the Complainant’s mark when it adopted the name in the same area of business of saris retailing. Further, the Respondent has filed for trademark registration in the same year in which it started its business with obviously no prior use of the NALLI mark. The Complainant has opposed the trademark registrations of the Respondent.

The panel found that the respondent registered and used the disputed domain in bad faith:

Quote:

Adoption and use of another’s mark for an extended period of time cannot convert such use to good faith use if there are circumstances, to show that the Respondent had knowledge of the mark prior to its adoption.

Quote:

The Respondent in the present case has chosen a domain name that is confusingly similar and virtually identical to the trademark of a leading sari retailer, and uses the domain name to promote similar products

Do you think the panel was correct in its decision? I don't know anything about the complainant, but I assume its trademark is well-known. Is that right?

Here's the link to the Nallis.com decision.

BTW, I notice the complainant also owns Nalli.in, Nalli.co.in, Nallis.in, and Nallis.co.in. All these domains forward to Nalli.com.

Jeff · #2 (**permalink**) 08-12-2009, 09:49 PM

I don't think that the case makes sense.

UDRP is supposed to be for obvious cases of cybersquatting. That isn't the situation in this case.

Here the respondent has a trademark and a business.

This is a case that should have been decided in a court, rather than by the UDRP. The respondent should have won.

pubdomains.in · #3 (**permalink**) 08-13-2009, 01:13 PM

I sometimes find it hard to believe the judgment passed by UDRP (and INDRP) as well.
@ Ceres Nalli is not a very common last name in India - at least I haven't come across anyone till date in my relatively small life span, though I have visited the stores often for shopping.

Respondent does have the option to take this further
→ Are URDP arbitrations final and binding?
The arbitrator's decisions are mandatory in the sense that accredited registrars are required to take the necessary steps to enforce the decision, such as transferring the name concerned. However, under the UDRP, either party retains the option to take the dispute to a court for independent resolution. Thus, it's possible the dispute won't end at arbitration. However, in practice, the matters are rarely taken to court after arbitration.

Ceres · #4 (**permalink**) 08-13-2009, 07:27 PM

Quote:

Originally Posted by pubdomains.in

@ Ceres Nalli is not a very common last name in India - at least I haven't come across anyone till date in my relatively small life span, though I have visited the stores often for shopping.

Oops, thanks for correcting me. I got that information from the UDRP decision itself. I had assumed the statement made by the defendant was correct - obviously, I shouldn't assume so much.

Quote:

Originally Posted by pubdomains.in

Respondent does have the option to take this further

It will be interesting to see if the respondent does take it to court...

dnpimping.com · #5 (**permalink**) 08-13-2009, 08:24 PM

Quote:

Originally Posted by Jeff

I don't think that the case makes sense.

UDRP is supposed to be for obvious cases of cybersquatting. That isn't the situation in this case.

Here the respondent has a trademark and a business.

This is a case that should have been decided in a court, rather than by the UDRP. The respondent should have won.

I completely agree with you on this one. I wonder if they will will actually have a chance to take this to court in the near future. UDRP's judgment can not supersede the law.