Aero Club of New Delhi, India, represented by Lall & Sethi Advocates, India was found guilty of Reverse Domain Name Hijacking (RDNH) by a one person UDRP WIPO panel on the generic domain name Woodlands.com
Aero Club operates under the domain name woodlandworldwide.com which they registered in 2002 and tried to grab the shorter Woodland.com domain which was registered on November 26, 1999
“The Complainant is an Indian partnership, which commenced business with two retail outlets in New Delhi in 1992. It is engaged in the sale of footwear, casual wear and accessories under the name “Woodland”.
The Complainant is the registered proprietor of a large number of trade mark registrations featuring the name “Woodland” in one shape or form, some of them being WOODLAND word marks.
The territories covered by these registrations run mainly East from Eastern Europe, but the Panel noted a Norwegian registration, a Jamaican registration, a St. Lucian registration and a Venezuelan registration, a registration in the Dominican Republic and a few registrations in North and East Africa.
While the Complaint features a table listing the registrations, it does not date them. The earliest legible registration that the Panel has been able to locate from the voluminous annexes is Indian trade mark Registration No. 710548 dated July 23, 1996, for a device mark comprising the name “Woodland”, the device of a tree and the slogan “leather that weathers”. There is also Indian trade mark Registration No. 573949 dated May 25, 1992, for a device not legible in the exhibit, which the Complainant states is a device mark comprising the name “Woodland” and the device of a tree. For the purposes of this Decision, the Panel accepts that the 1992 registration is for the mark as described by the Complainant. Both registrations are in class 25 and cover footwear and other clothing.
The Complainant operates a website connected to its domain name,which it registered in 2002.
On January 31, 2013, the Complainant’s representatives wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights, accusing the Respondent of violation of those rights and demanding inter alia transfer of the Domain Name.”
“The Complainant’s contentions as to the Respondent’s bad faith intent at the time of registration of the Domain Name in November 1999 depend exclusively upon the Complainant’s claim that at that time the Complainant’s trade mark was not merely famous in India, but sufficiently famous for its fame not only to have reached the Respondent in Dallas, Texas, USA, but also to have motivated the Respondent to seek to exploit the value of the Complainant’s trade mark by way of the Domain Name.…
