Ceres
New Member
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
The panel found that the respondent registered and used the disputed domain in bad faith:
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.
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
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:
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.
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.