Ceres
New Member
The latest INDRP decision concerns Wills.in. You should note that the Respondent did not reply to the case.
At first glance, you'd think Wills.in is too generic a name for a complainant to be successful under an INDRP claim.
However, this is another case where the Complainant claims ownership of a 'well-known trademark' within the meaning of Section 2 (1)(zg) of the Trademarks Act, 1999 (see Macmillan.in).
The Complainant (ITC Limited) has a presence in many areas: cigarettes, hotels, information technology, branded apparel etc.
The Complainant stated that its use of the word Wills originates from its well-known range for cigarettes (eg: WILLS CLASSIC, WILLS NAVI CUT and WILLS SILK CUT). The Complainant also stated that it later used the Wills name through its Wills Lifestyle stores, which include brands such as WILLS SPORTS, WILLS CLUBLIFE etc.
The Respondent purchased the Wills.in domain and provided links to other websites (sounds like a parked page). The Respondent also put Wills.in up for sale. The Complainant alleged that the Respondent registered the domain 5 years after it started branding under the Wills name.
The Arbitrator ordered Wills.in to be transferred to the Complainant as the Respondent failed to show a legitimate use of the domain (eg by offering goods or services). The Arbitrator also stated that the domain was confusing similar to the trademarks and trade names of the Complainant.
If you follow the reasoning under Macmillan.in, even if the Respondent had shown legitimate use of the domain, they would likely still lose the domain. This is because the Complainant is claiming status of a 'well-known trademark' (therefore even if you deal in different channels of trade, this will still cause a likelihood of confusion among consumers). The only way I see a respondent succeeding is if they dispute the status claim.
Note, these are just my views on how I read the case (I'm no lawyer!). Does anyone interpret the case differently?
At first glance, you'd think Wills.in is too generic a name for a complainant to be successful under an INDRP claim.
However, this is another case where the Complainant claims ownership of a 'well-known trademark' within the meaning of Section 2 (1)(zg) of the Trademarks Act, 1999 (see Macmillan.in).
The Complainant (ITC Limited) has a presence in many areas: cigarettes, hotels, information technology, branded apparel etc.
The Complainant stated that its use of the word Wills originates from its well-known range for cigarettes (eg: WILLS CLASSIC, WILLS NAVI CUT and WILLS SILK CUT). The Complainant also stated that it later used the Wills name through its Wills Lifestyle stores, which include brands such as WILLS SPORTS, WILLS CLUBLIFE etc.
The Respondent purchased the Wills.in domain and provided links to other websites (sounds like a parked page). The Respondent also put Wills.in up for sale. The Complainant alleged that the Respondent registered the domain 5 years after it started branding under the Wills name.
The Arbitrator ordered Wills.in to be transferred to the Complainant as the Respondent failed to show a legitimate use of the domain (eg by offering goods or services). The Arbitrator also stated that the domain was confusing similar to the trademarks and trade names of the Complainant.
If you follow the reasoning under Macmillan.in, even if the Respondent had shown legitimate use of the domain, they would likely still lose the domain. This is because the Complainant is claiming status of a 'well-known trademark' (therefore even if you deal in different channels of trade, this will still cause a likelihood of confusion among consumers). The only way I see a respondent succeeding is if they dispute the status claim.
Note, these are just my views on how I read the case (I'm no lawyer!). Does anyone interpret the case differently?
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