Pantaloon goes after domain #6

IT.com

Ceres

New Member
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).
 
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umm...

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

pity though ..nice name to loose:rolleyes:

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!]
 
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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.
 
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
 
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.
 
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?
 
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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.
 
You don't have to be in India to defend an INDRP case. Hire a reputable lawyer in India that specialises in domain law, trademarks etc.
 
If you have a large portfolio, I think that it is generally worth defending an INDRP even if it doesn't make economic sense for the domain in question.

If you lose a dispute, that sets a precedent that you are a cybersquatter and makes it much more likely that you'll lose future disputes.
 
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

One of the Pantaloon's INDRP cases was against me, and I can tell you that the arbitrator originally assigned to the case became "unavailable" immediately after I was notified of the complaint and a new arbitrator was assigned. It seemed weird to me, but it could also mean that the original arbitrator had a conflicting relationship with Pantaloon's in some way that made him biased.
 
Thanks for joining the forum mdmgeneral. It's good to have someone with firsthand experience!

Did you have legal representation? How easy or difficult was it to communicate with the arbitrator? Was your website/parking page accessible during the arbitration?
 
Thanks for joining the forum mdmgeneral. It's good to have someone with firsthand experience!

Did you have legal representation? How easy or difficult was it to communicate with the arbitrator? Was your website/parking page accessible during the arbitration?

I am attempting to appeal the decision now, as the rules of procedure were violated in that the decision was not made within 90 days of arbitration commencement- so I won't go into 100% of the details yet. Once I see where this goes and whether or not I have to proceed with legal action in Indian courts, I will give a fully detailed account of my experience with documentation, correspondence, and commentary to help everyone understand the process from my first hand experience.

For now, I can answer some general questions and give a few opinions:

I did not have legal representation, but I consulted with a local attorney in the USA for guidance in understanding the process and how my case should be presented. I will likely hire Indian legal representation if the decision is not set aside due to the violation of the rules of procedure by the arbitrator, which technically renders the decision void and therefore unenforceable. If I do end up hiring Indian legal representation, I will likely also present a request to have the decision overturned due to the fact that the accusations the decision is based on are not factually supported in any way.

It was extremely difficult to communicate with the arbitrator. The legal department at nixi and the arbitrator would request acknowledgment that I received their emails and attachments, but when I requested the same, I received no response. I had to contact the legal department at nixi after I sent several unanswered emails to the arbitrator. I received a rude response from the legal department informing me they could not be involved in the arbitration process and they basically told me that if the arbitrator did not answer my emails, it was not their problem. I cc'd the arbitrator on this email and finally received a rude response from the arbitrator letting me know that they had received all my emails and to not contact nixi any more. This was after at least a month of waiting for a response from the arbitrator to various emails I sent. On one occasion, the arbitrator sent out an email to all parties which referenced an enclosure, but did not attach the enclosure. I emailed the arbitrator twice to request they send the enclosure and received no response to that enquiry to date. I really got a vibe from the legal department at nixi and the arbitrator that they felt I was wasting their time by presenting a solid defense and not just rolling over.

The original complaint was very weak. I assume the complainant did not expect me to respond. After I sent my response, the complainant was given a week long extension to reply to my response. Their reply was full of blatant lies and even misstated the facts presented in their own exhibits. I asked for an extension to respond to their reply to present evidence and point out their misleading misstatements of their own exhibits. I did not receive a response to this request until I contacted nixi as noted in the previous paragraph.

My website had plenty of legitimate, non-commercial content that did not relate to the complainant's business, and had no advertisements or any other implementation of a revenue generation model. This content was based explicitly on the meaning of the generic term that made up the URL. The site had been active for close to a year prior to the filing of the complaint; and per google's cache, I was able to prove that the site was still active just prior to the complaint. To answer your question- they still locked my site and stopped pointing it to my name servers. I'm not sure if this is standard protocol in these cases, or if my registrar did something wrong when they locked it. Needless to say, the domain stopped resolving to my website.

Another thing to note is that the decision was not made based on the evidenced facts presented by the parties, but the personal feelings and unsupported assumptions of the arbitrator. The role of an arbitrator is to weigh the evidenced facts presented by the parties and make a decision solely based on the content of those facts and how they are interpreted when law is applied to them. Their position is very similar to a judge. Their personal feelings or beliefs should have no bearing on the case. They should be impartial and unbiased when making their decision.

The arbitrator in my case admitted that the facts I presented were legitimate and made a strong case in their literal nature, but based her decision solely on her unsupported accusations that I had ulterior motives and that I was a cyber squatter. I was offered money by the complainant for the domain prior to the complaint and told them it was not for sale. I'm not sure how this makes me a cyber squatter. I paid $3.43 for the original registration- I could have made a nice profit if my intention was to sell. I also have other generic Indian domains with content being added to them on a regular basis. Facts and evidence are just that and an arbitrator needs to judge them based on their literal nature. It is unethical for an arbitrator or judge to make accusations and assumptions that are not supported by the facts because they feel that something else might be going on.

The accusation that I was a cyber squatter was not supported by any evidence except the the arbitrator stating that they assumed I had ulterior motives. Just based on the domain name, the case could have gone either way and even if I still lost, I would have respected the decision if it was made properly and was factually supported. I have a very difficult time believing in this dispute and arbitration process after being personally involved in the process. I feel like Indian domains are extremely high risk investments that can be taken from under your feet at any time. It makes me nervous to spend time writing content for my Indian sites because at any time, they can be unfairly taken away because a company in India somehow owns a trademark on a term like "all." With renewal rates at 12-14 dollars, I'm starting to think they aren't worth the gamble.

*I guess i should add some insight to "all." This was not my domain, but since I used it as an example, I should point out that The Pantaloon Group did not own a trademark for the term "All" in it's generic sense, only when combined with unique phrases that applied to the trade they used it in. These circumstances were also the same in my case. I was accused of not performing due diligence to ensure the term I registered was not trademarked in India, but I did, in fact, verify that it was not trademarked in India prior to registration. It was PART of a registered trademark made up of a unique phrase that applied specifically to use in specific trades and applications, but the single generic term was not trademarked when used in its generic form. The next thing we will see is companies winning cases for names like the.in, is.in, india.in, of.in, etc. because they have unique phrases trademarked that contain those terms. I'm not sure if the intellectual property laws in India are flawed this badly, or if it's just a poor interpretation by the arbitrators in all these cases.
 
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I am attempting to appeal the decision now, as the rules of procedure were violated in that the decision was not made within 90 days of arbitration commencement- so I won't go into 100% of the details yet. Once I see where this goes and whether or not I have to proceed with legal action in Indian courts, I will give a fully detailed account of my experience with documentation, correspondence, and commentary to help everyone understand the process from my first hand experience.

For now, I can answer some general questions and give a few opinions:

I did not have legal representation, but I consulted with a local attorney in the USA for guidance in understanding the process and how my case should be presented. I will likely hire Indian legal representation if the decision is not set aside due to the violation of the rules of procedure by the arbitrator, which technically renders the decision void and therefore unenforceable. If I do end up hiring Indian legal representation, I will likely also present a request to have the decision overturned due to the fact that the accusations the decision is based on are not factually supported in any way.

It was extremely difficult to communicate with the arbitrator. The legal department at nixi and the arbitrator would request acknowledgment that I received their emails and attachments, but when I requested the same, I received no response. I had to contact the legal department at nixi after I sent several unanswered emails to the arbitrator. I received a rude response from the legal department informing me they could not be involved in the arbitration process and they basically told me that if the arbitrator did not answer my emails, it was not their problem. I cc'd the arbitrator on this email and finally received a rude response from the arbitrator letting me know that they had received all my emails and to not contact nixi any more. This was after at least a month of waiting for a response from the arbitrator to various emails I sent. On one occasion, the arbitrator sent out an email to all parties which referenced an enclosure, but did not attach the enclosure. I emailed the arbitrator twice to request they send the enclosure and received no response to that enquiry to date. I really got a vibe from the legal department at nixi and the arbitrator that they felt I was wasting their time by presenting a solid defense and not just rolling over.

The original complaint was very weak. I assume the complainant did not expect me to respond. After I sent my response, the complainant was given a week long extension to reply to my response. Their reply was full of blatant lies and even misstated the facts presented in their own exhibits. I asked for an extension to respond to their reply to present evidence and point out their misleading misstatements of their own exhibits. I did not receive a response to this request until I contacted nixi as noted in the previous paragraph.

My website had plenty of legitimate, non-commercial content that did not relate to the complainant's business, and had no advertisements or any other implementation of a revenue generation model. This content was based explicitly on the meaning of the generic term that made up the URL. The site had been active for close to a year prior to the filing of the complaint; and per google's cache, I was able to prove that the site was still active just prior to the complaint. To answer your question- they still locked my site and stopped pointing it to my name servers. I'm not sure if this is standard protocol in these cases, or if my registrar did something wrong when they locked it. Needless to say, the domain stopped resolving to my website.

Another thing to note is that the decision was not made based on the evidenced facts presented by the parties, but the personal feelings and unsupported assumptions of the arbitrator. The role of an arbitrator is to weigh the evidenced facts presented by the parties and make a decision solely based on the content of those facts and how they are interpreted when law is applied to them. Their position is very similar to a judge. Their personal feelings or beliefs should have no bearing on the case. They should be impartial and unbiased when making their decision.

The arbitrator in my case admitted that the facts I presented were legitimate and made a strong case in their literal nature, but based her decision solely on her unsupported accusations that I had ulterior motives and that I was a cyber squatter. I was offered money by the complainant for the domain prior to the complaint and told them it was not for sale. I'm not sure how this makes me a cyber squatter. I paid $3.43 for the original registration- I could have made a nice profit if my intention was to sell. I also have other generic Indian domains with content being added to them on a regular basis. Facts and evidence are just that and an arbitrator needs to judge them based on their literal nature. It is unethical for an arbitrator or judge to make accusations and assumptions that are not supported by the facts because they feel that something else might be going on.

The accusation that I was a cyber squatter was not supported by any evidence except the the arbitrator stating that they assumed I had ulterior motives. Just based on the domain name, the case could have gone either way and even if I still lost, I would have respected the decision if it was made properly and was factually supported. I have a very difficult time believing in this dispute and arbitration process after being personally involved in the process. I feel like Indian domains are extremely high risk investments that can be taken from under your feet at any time. It makes me nervous to spend time writing content for my Indian sites because at any time, they can be unfairly taken away because a company in India somehow owns a trademark on a term like "all." With renewal rates at 12-14 dollars, I'm starting to think they aren't worth the gamble.

*I guess i should add some insight to "all." This was not my domain, but since I used it as an example, I should point out that The Pantaloon Group did not own a trademark for the term "All" in it's generic sense, only when combined with unique phrases that applied to the trade they used it in. These circumstances were also the same in my case. I was accused of not performing due diligence to ensure the term I registered was not trademarked in India, but I did, in fact, verify that it was not trademarked in India prior to registration. It was PART of a registered trademark made up of a unique phrase that applied specifically to use in specific trades and applications, but the single generic term was not trademarked when used in its generic form. The next thing we will see is companies winning cases for names like the.in, is.in, india.in, of.in, etc. because they have unique phrases trademarked that contain those terms. I'm not sure if the intellectual property laws in India are flawed this badly, or if it's just a poor interpretation by the arbitrators in all these cases.

Thanks, very illuminating!
 
mdmgeneral, thanks for sharing your experiences and general opinion about the INDRP process.

An arbitrator not responding to a party's notification of non-delivery of papers is a serious concern. It also implies that such an arbitrator made an award knowing one party to the case didn't receive all the papers.
 
Judging by the Pantaloons' INDRP decision, it seems that the decision was clearly made by the arbitrator before your response. So the response or the kind of response did not matter.

Also, since you responded and responded with a very strong explanation, the reason for the taking away your name was obfuscated.
 
Thanks for the replies. I have to agree that it felt very much like the case was decided prior to my response. I get this feeling from reading other decisions as well. A lot of times, the arbitrator states the facts presented by both parties and then completely ignores the most relevant and major facts presented supporting the response and bases the decision on weak and unsupported arguments by the complainant. I just figured I had nothing to lose, but the domain, and could only gain experience by responding. Since I had a valid case and did not make any "cyber squatter" moves prior to the complaint, I figured they would not assess any costs. Unfortunately, they did. It's a terrible, unprofessional process and could use some major improvements- especially in laying out more strict procedures and actually following them.

Like I said, I sent an appeal to the legal department at nixi and instead of a response to my appeal, I received a notice that the case had been concluded and the decision was posted. The appeal was not even acknowledged. I will go ahead and go forward with detailing my entire experience, including full documentation and correspondence from all parties. This way, people who have not been through the process can get a feel for exactly what it's like. I will let you guys know when it's posted.
 

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