Business Magazine

Purva.com Lost In UDRP After Winning Last Year: Brokers Email To TM Holder Changes Everything

Posted on the 19 September 2014 by Worldwide @thedomains

A  UDRP panel order the transfer of the domain name Purva.com to Puravankara Projects Limited after another UDRP panel almost one year to the date denied a UDRP.

The ownership of the domain did not change from last year.

Its a very long decision but an important one that I think all domainers should read, so instead of removing much of the language I left the opinion and dissenting opinion in tack.

At the end of the day is appears the trademark holder now one the case, where they lost last year based on the conduct of the broker of the domain name which sent a series of emails to the trademark holder eventually asking for $9 Million dollars or threatening to sell it to a company that would turn it into a porn site.

The three member panel came to a majority decision meaning that one of the three panelist voted against the transfer.

Here you go, its long but important:

“The Panel observes that the Complaint filed by Complainant is against the same Respondent in regard to the same disputed domain name as a previous UDRP case, Puravankara Projects Limited v. Shiva Malhotra, WIPO Case No. D2013-0260, decided on March 25, 2013.

“The Complaint in that previous proceeding was filed on February 7, 2013. ”

Complainant was unsuccessful in persuading the panel who rendered the previous determination (the “previous panel”) that the disputed domain name was the subject of abusive registration and use within the meaning of the Policy. That previous panel determined that Complainant had rights in a trademark, and that the disputed domain name was identical to that trademark. That previous panel further determined that Complainant had established that Respondent lacked rights or legitimate interests in the disputed domain name.The previous panel was not persuaded that Respondent’s registration and use of the disputed domain name constituted bad faith. The specific grounds for that determination are discussed in Section 4, infra. The concluding observation was: “The Panel has sufficient doubts as to the Respondent’s intentions to recommend that if the Respondent’s future use of the Domain Name should suggest that the Respondent’s motivation at the outset was, as the Complainant has contended, in bad faith, the Complainant should be permitted to re-file the Complaint. In so recommending the Panel recognises that whether or not a re-filed complaint is to be accepted is a matter for the Center and the panel selected to decide the case” (Puravankara Projects Limited v. Shiva Malhotra, supra) [italics added].

As detailed below in Section 4, Complainant has submitted along with its Complaint new evidence of acts post-dating the previous panel determination that Complainant alleges justify the instant refiling and a new determination against Respondent. A majority of this Panel regards that new evidence as sufficient to warrant a finding that Respondent registered and used the disputed domain name in bad faith. That alone suggests that the evidence of acts occurring after the previous determination are sufficient to justify the refiling, bearing in mind that such evidence was not available to Complainant when it filed its original complaint in the previous case.

The dissenting Panelist does not share the majority’s assessment of the new evidence submitted by Complainant in the sense of warranting a finding that Respondent registered and used the disputed domain name in bad faith.

Nonetheless, the dissenting Panelist considers that the express recommendation of the previous panel regarding the instant refiling should, while not dispositive, be at least taken into account when assessing whether a refiling should be accepted. Whether or not ultimately persuasive, the new evidence submitted by Complainant concerns acts that post-date the previous determination. While in the dissenting Panelist’s view this evidence weakly supports a refiling and is not persuasive as to bad faith, in light of the recommendation of the previous panel it is not sufficiently without basis to preclude acceptance of the refiling. The dissenting Panelist here accepts the refiled Complaint, but finds against Complainant on the merits.

The Panel accepts Complainant’s refiled Complaint.

4. Factual Background

The Panel adopts the Factual Background of the previous panel in so far as it relates to matters occurring prior to or contemporaneous with the filing of the complaint in that proceeding. That Factual Background is repeated here:

The Complainant is an industrial company incorporated in India in 1986 and engaged in the fields of property construction and development. It is based in Bangalore. From the financial reports and other company literature annexed to the Complaint it is apparent that the Complainant is in a substantial way of business and has a number of subsidiary or associated companies whose company names commence with the name, “Purva”.

The Complainant’s trading activity is confined largely to India. “The Company operates primarily in India and there is no other significant geographical sector.” [Paragraph 32 of the Notes to the Complainant’s Financial Statements for the year ending March 31, 2012.]

The Complainant is the registered proprietor of two Indian trade mark registrations for the word mark PURVA, namely:

No. 1182590 dated March 12, 2003 in class 19 for “building material, natural and artificial stone, cement, lime, mortar, plaster and gravel, peipes (sic) of earthenware or cement and other items used for construction purposes included in class 19”

No. 1266091 dated February 9, 2004 in class 37 for “building construction repair, installation services”.

The Complainant is also the registrant of a number of domain names comprising or incorporating the name, “purva”. However, its principal operating website appears to be connected to its domain name, <puravankara.com>. At that website details appear of the Complainant’s development projects, most of which have names incorporating the name “Purva” (e.g. “Purva Vantage”, “Purva Grande”, “Purva Riviera”). The website also features details of the Complainant’s “Purva Interiors”, “Purva Value” and Purva Advantage” services, the last of which features a Purva Advantage Card entitling the holders, owners of a “Purva Home”, to various benefits.

The Domain Name was first registered on March 28, 2000. It is not known who the original registrant was, but it appears from the Internet Archive WayBackMachine that between 2002 and April 2005 it was being used to connect to a website of the Complainant. The Respondent claims to have acquired it by way of an online auction organized by Namejet in May 2012.

On December 24, 2012 the Respondent, through his company, AsiaPacific Tec Pty. Ltd., applied to the Australian Trade Mark Registry for registration of PURVA as a trade mark in class 35 for “retailing of goods (by any means)”. The application is pending.

On January 16, 2013 the Complainant visited the Respondent’s website. The Domain Name was connected to a Pay-Per-Click (“PPC”) free parking page hosted by the Registrar featuring eleven primary advertising links. The links most obviously relating to the Complainant’s field of activity are five in number, one headed “New Projects in Bangalore”, one headed “Architects in Bangalore” and three links associated with home/interior decoration and design. In addition, there is another Bangalore-related link headed “Packaging Boxes Bangalore”. The five remaining links are one headed “Tooth Jewelry”, one headed “Novelty Gift Items”, another, meaningless to the Panel, appearing in Chinese script and two relating to domain name services, one being a link to the Registrar’s “Official Site”. Further visits to the Respondent’s website were made by the Complainant on January 25, 2013 and January 28, 2013 as described in section 6E below.

As noted in the discussion of refiling, the previous panel determined that Complainant owns rights in the PURVA trademark in India, and that the disputed domain name, <purva.com> is identical to that trademark within the meaning of the Policy.

The previous panel determined that Complainant established that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent had asserted that he registered the disputed domain name because of its Jaini religious significance and because he claimed an intended use in connection with a website selling “books, scriptures and other accessories related to the Jain religion worldwide”. Through his company, AsiaPacific Tec Pty. Ltd., Respondent on December 24, 2012 (prior to Complainant’s filing of the original complaint) applied to the Australian Trade Mark Registry for registration of PURVA in connection with the retailing of goods, and claimed to have expended time and resources on preparing an online business.

The previous panel determined that Respondent had produced no concrete evidence other than the trademark application to support his contention of a plan to use the disputed domain name for a bona fide offering of goods and services. On this basis, the previous panel rejected Respondent’s assertion of rights or legitimate interests in the disputed domain name.

Subsequent to the previous panel determination, Complainant filed a notice of intention to oppose Respondent’s (through his company) application for trademark registration at the Australian TradeMarks Registry. That notice was rejected by the Australian trademark office (IP Australia), according to Complainant because it did not have substantial use of the corresponding PURVA trademark in Australia. Complainant also provided evidence that Respondent had allowed its application for registration of the PURVA trademark in Australia to lapse, according to Complainant for non-payment of fees. A printout furnished by Complainant regarding trademark status indicates that Respondent’s application was approved by IP Australia (and lapsed), and Respondent has acknowledged that his trademark application for Australia has lapsed, stating that he decided against registering a trademark of religious significance.

The previous panel weighed a series of factors in determining that Complainant had failed to establish that Respondent registered and used the disputed domain name in bad faith. Because this decision on refiling involves weighing those factors anew based on subsequent acts, this Panel considers it expedient to repeat the principal assessment of the previous panel on the issue of bad faith here:

The Panel does not seek to set out any general principles, but on the facts of this case and the chronology set out above, the Panel has come to the following conclusions relevant to the Complainant’s contention that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy:

1. The name “Purva” as part of the Domain Name could perhaps be taken by some, as being without question the trade mark of the Complainant, but the Respondent has put sufficient material before the Panel to establish that there are many other potential fair usages and users of that name whether for its religious connotations, its use as a personal name or as a corporate name. In the view of the Panel the Complainant cannot sensibly claim a monopoly or anything approaching it beyond its specialised fields of activity in India. As a trade mark, “Purva” does not get anywhere near the “Coca-Cola” level of distinctiveness.

2. Accordingly, in the view of the Panel, the selection of the Domain Name is not of itself indicative of a mala fide intent as would have been the case if the trade mark selected for the Domain Name had been say “Puravankara” which is highly distinctive and more explicitly referable to the Complainant.

3. While there are aspects of the Respondent’s story, which have given the Panel cause for concern, it is the case that the Respondent (through his company) applied for registration of the PURVA word mark in Australia on December 24, 2012 approximately six weeks before the filing of the Complaint. As indicated above, in the view of the Panel, the Respondent might reasonably have believed that the use of the name “Purva” in Australia (or indeed online) as a trade mark for the retail sale of Jaini/Hindu religious literature would be unlikely to infringe the Complainant’s trade mark rights, even if he was aware of those rights.

4. The Respondent seems to have a track record of registering names associated with the Hindu religion (e.g. <shiva.me>, <godavari.com> and <vishakha.com>), so the choice of the Domain Name could reasonably be part of a pattern unconnected with the Complainant’s rights.

5. There is insufficient material before the Panel to satisfy the Panel that the Respondent acquired the Domain Name with the actual intention of exploiting the Complainant’s rights to his advantage or to the Complainant’s disadvantage.

6. If in these circumstances and notwithstanding that finding the Respondent is to be held to be in constructive bad faith (a concept that instinctively the Panel finds unattractive), then the Panel would at the very least have needed something more to show that the Respondent has an abusive track record. There is nothing of that kind in the evidence before the Panel.

7. Some generic words are also trademarks.

For a registrant of a domain name featuring a generic word to be held constructively in bad faith because he left it in the hands of his registrar pending development of his website and the registrar connected it to a free parking page featuring offensive links, this Panel would at the very least require some evidence to show that the registrant ought to have been aware of the risk and ought to have checked how the domain name was being used. The Panel is not persuaded that this is such a case.

8. In the view of this Panel (and on the evidence before the Panel) the Respondent appears to have taken prompt action to remedy the Complainant’s cause for complaint as soon as it was drawn to his attention and it does not appear that in fact the Respondent derived any commercial gain from the advertising links appearing on the Registrar’s free parking page to which the Domain Name was connected.

On the above findings the Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith and the Complaint fails.

A screenshot of the website identified by the disputed domain name included by Complainant in its filing shows a blog entry, “Welcome to Purva.com”, followed by “Welcome to the great world of Purva.com. The website is being developed to deliver an excellent product to all viewers. Please keep coming back to enjoy the excellent product.” According to Complainant, this is the substance of the website identified by the disputed domain name that has appeared since the conclusion of the previous proceeding (see also the discussion of the activities of Alex Domain Broker, infra).

As previously indicated, Respondent subsequent to the previous panel determination has allowed the application for trademark registration in Australia referenced in paragraph 2 above to lapse. Based on a printout of Trade Mark Details furnished by Complainant, the lapsing (following approval) was “advertised” by IP Australia on November 7, 2013 (approximately 7 months following the determination by the previous panel).

In the previous proceeding it was noted that, while not mentioned in the complaint, Complainant appeared to be a prior registrant of the disputed domain name

Respondent claimed to have acquired it through an auction in May 2012.

In the present Complaint, Complainant argues that it had paid for renewal of registration of the disputed domain name for a period of five years, and that it was unable to explain why the registration had expired.

Complainant has newly provided evidence of a chain of email correspondence with a domain name registration services provider in India, dating from March 27, 2010 to April 20, 2010. According to the services provider, the registration was not renewed for 5 years because Complainant had not transmitted the requisite payment to the service provider. As a courtesy, the service provider had renewed the registration for a period only of one year, expiring on March 28, 2011. There is a subsequent email from Complainant to the service provider requesting confirmation of a five-year renewal stating that it had in fact paid the five-year renewal amount and the amount was collected by the service provider, but despite inquiry there was no confirmation on the record of receipt of payment or of renewal from the service provider.

There is no further explanation as to why Complainant’s registration of the disputed domain name was permitted to expire such that Respondent was able to secure it at auction in May 2012.

Complainant has provided email correspondence from three different parties to Complainant offering to act as “broker” to secure the disputed domain name from Respondent. The first, dated April 2013 from a party identified as “Alex Domain Broker”, originating from “Alex Dselva [mailto:[email protected][redacted]]”, stated:

Hello to you as per the internet records I got to know that you are in need of a domain www.purva.com.

I did all my research and come to conclusion that this is your companies brand name, and you need it, at least in your respective company.

OK coming straight to the point “I can broker it for you”.

If interested Do mail be back ASAP.

Regards

Alex Domain Broker

A subsequent email dated May 6, 2013 from “Alex”, originating from “India Leaks [mailto:[email protected][redacted]]”, stated:

I have tried to approach you through my earlier emails for the domain name www.Purva.com.

I have the mandate to sell the above domain name. At the moment I am currently negotiating a deal with a major Chinese porn company who are pretty interested in this nice and short domain name.

The deal although bringing good money for the domain owner would also bring bad reputation and infamy to your brand as this term is central to your marketing campaign. I am also aware of the recent UDRP (domain dispute) you folks have lost over this name and I myself have been involved in a number of UDRPs in the past.

Let me inform you that once the new owner starts using this domain for PORN related services there is no way (based on UDRP laws) that you will ever come close to even filing a decent complain let alone winning it. Your attorney would better help you understand this whole case.

I would be happy to assist you in acquiring this great and very important domain for your business. You are guys are welcome to contact me back in case you are interested, if not then BEST OF LUCK for your future business.

Thanks.

Alex.

After a delay explained by Alex as the consequence of an accident, there is substantial additional correspondence between “Alex Domain Broker” and Complainant’s Vice President-Legal. Starting with an email dated November 27, 2013, Alex suggests a price for acquisition of the disputed domain name of USD 9 million, plus a seven percent brokerage fee payable by Complainant. By email dated November 19, 2013, Alex advised Complainant’s legal counsel that he had asked his client (allegedly Respondent) to write his name as a broker on the webpage identified by the disputed domain name, and suggested that Complainant check the website. Further correspondence indicates that Alex posted only his first name on the website, but subsequently posted his full name. Thereafter the following was posted on the website identified by the disputed domain name, apparently on or about December 10, 2013:

Alex Dselva is my only sole broker.

Alex Dselva is my only sole broker.

And I had never given authority and spoken to any other broker except Alex.

Nor I’ll give this authority to anyone in future too except Alex.

Deal given only by Alex will be last and final.

Dear Alex please try to make things quick. And please ask your man I can’t confirm each and every time as I have other works too.

Posted by World at 12.16

The printouts of webpages furnished by Complainant regarding the above-quoted posting by Alex Dselva show the message as a “blog” posting, as evidenced by the structure of additional blank input spaces, a separate identifier of the “Blog Archive” listing a single posting for December with the same title (“Alex Dselva is my only sole broker.”), and the terms “Next Blog” in a taskbar above the posting on one of the printouts.

Following some further exchanges, by email dated December 18, 2013, Complainant’s legal counsel stated to Alex:

I have checked the website and found that you have put up a few things as required by me. However, it neither talks about the amount nor about the escrow. I can understand you not mentioning the amount but I would like to see clear instructions about dealing with you on behalf of Shiv Malhotra through Escrow. Why is Shiv Malhotra’s name not mentioned anywhere? After this, I will have no further requirement. This week I am not traveling so as soon as you put up this, I will take it up and do the needful.

Please understand that I am not wasting anybody’s time. If I have to take up this issue with the management especially since you are asking for a whopping $ 9 Million for returning this website to us, I cant go with half baked information to the management and hence I am making sure that I am dealing with the correct person and that I have all the required information in hand before proceeding.

There is a good deal of subsequent back-and-forth between Complainant and Alex Domain Broker in which Alex accuses Complainant and its officers of being shortsighted in protecting their valuable brand and threatening to increase the purchase price on a weekly basis, and on or about February 26, 2014, the parties accuse each other of unprofessional conduct. By email dated April 16, 2014, Complainant advises:

Dear Mr Alex

l have discussed the matter at length with my management. They remain firm that they will not succumb to your tactics of extortion and blackmail and pay a sum of USD 9 million or any other sum in order to purchase the domain name from your principal. Your principal has been contacting us through various agents (or at least using the names of various people) and it is clear that he has no legitimate interest in the domain name and that it was registered in bad faith. Your principal has also threatened to sell the domain name to someone who allegedly wants to use it as an adult site. It is clear that the only intention of your principal in registering the brand name is to coerce us into paying an extortionate sum of money to retrieve the domain name. We will not do so, and all our rights in this regard are expressly reserved.

There is no indication throughout any of this correspondence that Respondent was involved in this discussion (noting, however, the message(s) posted by Alex on the website identified by the disputed domain name). Respondent has denied any knowledge of this broker activity, and has suggested that the matter might be tendered to the FBI, ASIO, or other competent authority to investigate the source of the emails from Alex.

Complainant has also submitted evidence of an approach by Sambisavi Kandula and his wife, Pavani, to Complainant offering to broker the sale of the disputed domain name. This exchange begins with an email dated June 12, 2013 to the General Manager-Legal of Complainant from Pavani, stating:

Hope you are doing good. I have recently read about the UDRP case of Purva.com.

I can try to help you in acquiring the same name for you. My husband has been successful in acquiring Godavari.com very recently owned by the same owner who owned Purva.com.

Let us know if you need some help regarding the same topic.

Best Regards,

Pavani

As a postscript to an email from Pavani dated June 15, 2013, she advises:

Disclaimer: Purva.com domainer owner is not aware of we approaching you, this is our idea of getting in touch with you to help each other as we believe we can value add in settling this matter amicably. However if you are looking to proceed in legal means, we cant help you any means as we are not directly involved in thing related to this case.

By email dated June 24, 2013, Pavani states:

You are the expert of the law, we are no way near to your experience in this topic. We are genuine people with genuine interests in AP state related online business, we have acquired many premium city names in AP and we have clear plans to start the online business in next 3 years from now.

We dont know Mr. Shiv Malhotra in person prior to acquiring Godavari.com, we have made a contact for acquiring Godavari.com as it fit well into our future strategy of developing Geo focused online business in AP state. For your info we own AndhraPradesh.com and also many other popular geo names of AP state.

We see no issue of Mr Shiv Malhotra registering the Purva.com (both ethical and legal perspectives) as Shiv has acquired this name from a drop catching auction platform publicly and in our honest view “PURVA” is a generic word and highly attached to Indian heritage and culture, however if he acquired this name with the intention of selling to trademark owner, its indeed Unethical and illegal too. We are not willing to encourage such an attitude even if we are getting financially benefited out of this negotiations.

We will happy to cease these negotiations here if you are confident that Mr Shiv has the wrong intentions and we are helping him to fulfill his objectives as in your email you have mentioned as brokers (honestly its our own idea of approaching, we are no way connected to Mr. Shiv), we no way want to associate ourselves to a wrong doer for the reasons of making money, its not our intention and never be the case.

The other hand if you believe we can really value add and if you are happy for us proceeding with the negotiations with Mr. Shiv, we will happy to assist you on the same. For all the hard-work and time we are spending and will spend on this matter we expect 15000 Rs as a service fee.

Please confirm if you are ok to proceed with this one and also the service fee proposed above.

Best Regards,

Pavani

Subsequently, Pavani and her husband Sambasiva advise Complainant that they have entered into detailed discussions with Respondent’s technical and legal consultant, and have been advised to their dismay that the asking price for the disputed domain name is USD two million, which they regard as too high and are seeking to renegotiate. They propose to use escrow.com to carry out the transaction.

Respondent by email dated July 15, 2013 indicates that Complainant’s management is considering the proposal, but in the meantime requires a letter from Respondent confirming that the brokers are authorized to act on his behalf. Sambasiva transmits an email to Complainant dated July 17, 2013, indicating that the legal representative of Respondent has sent him the following message: “We authorize Mr. Sambasiva R Kandula to broker the sale of the domain name Purva.com till 5pm AEST, 23/7/2013.”

By email dated July 18, 2013, Complainant replies:

We need to see a formal authority letter sealed and signed by Mr. Shiv Malhotra authorizing you/anyone to deal with the transaction of sale of domain name “purva.com”. We would also need some identity proof of Mr. Shiv Malhotra to be attached along with the authority letter for authentication.

As indicated earlier this is an absolute requirement for us to put forth any proposal to the management for their consideration.

By email dated July 26, 2013, Sambasiva responds:

I have received a communication from Mr. Shiv’s legal representative to call-off the negotiations as they have not received a response by 23rd July, I have personally requested the deadline to be extended until tomorrow COB and they have agreed for the same. Appreciate if you can confirm the status on this one.

Thanks for taking time out for this one.

There is apparently no further correspondence between these parties.

Complainant has also transmitted an email from a party named “Chiang (Domain Broker)” dated October 19, 2013, indicating that he was asked by the “owner of the above domain name and my client to find a buyer for it”. Chiang indicates that there is another anxious buyer waiting in the wings to use it for an adult site for their online clients. He concludes:

Either ways in my opinion you don’t want to put your companies name in a porn/adult site and damage your Brand name, Identity, Clients, brand ambassadors, business and finally your company.

If you are reading it in a good health please reply me via this email ASAP.

As my client is in bit hurry I can’t wait for more than 72 working hrs.

There does not appear to be any return correspondence from Complainant to Chiang.

Complainant has repeated and provided evidence that was either furnished or available in respect of the previous proceeding regarding the disputed domain name.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution proceedings under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider such as the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

Majority opinion:

C. Registered and Used in Bad Faith

The previous panel stated that the case was not easy to decide and that “it is conceivable that the Respondent registered the Domain Name, knowing of the Complainant’s trade mark rights and with the intention at some time to exploit those rights to his own advantage by bad faith use”. The majority of the Panel considers that the evidence provided by Complainant of Respondent’s actions subsequent to the previous determination, when considered together with the evidence provided by Complainant in support of its case in the previous determination (the “previous evidence”), demonstrates that what the previous panel considered to be conceivable as regards bad faith is in fact more likely than not.

In the majority’s opinion, the following aspects of the previous evidence are pertinent to the issue of whether Respondent has registered and is using the disputed domain name in bad faith: (i) Respondent acquired the disputed domain name in May of 2012 at an auction from a website that sells expired domain names, suggesting that Respondent’s purchase may have been opportunistic rather than in furtherance of a genuine intention to create a business of selling Jain-related products; (ii) the parking page to which the disputed domain name originally resolved contained automatically-generated links, many of which were to businesses connected to the field of Complainant’s business, indicating that the name “purva” was sufficiently distinctive in the property development field for the software to have selected links to related businesses; (iii) the parking page to which the disputed domain name originally resolved contained the text “Want to buy this domain?” and a box beneath it reading “Let us help”, suggesting that Respondent’s intention in registering the disputed domain name was to sell it rather than use it in connection with a bona fide business; (iv) Respondent filed an Australian trademark application for a term that he yet maintains in his Response is descriptive and hence lacking distinctiveness, and did so only after receiving notice of Complainant’s concerns about his use of the disputed domain name, both of which suggest that Respondent was seeking to concoct a claim to a right or legitimate interest in the disputed domain name; and (v) Respondent provided no evidence of preparations to use the disputed domain name for the purpose for which it was allegedly registered, suggesting that Respondent had no bona fide intention to use the disputed domain name for that purpose.

In the majority’s opinion, the following aspects of the evidence provided by Complainant of Respondent’s actions subsequent to the previous determination, when considered together with the previous evidence, establish, on the balance of probabilities, that Respondent registered the disputed domain name for the purpose of selling it to Complainant for an amount in excess of its out-of-pocket expenses: (i) Respondent, after prevailing in the previous determination, allowed its Australian trademark application to lapse despite the fact that it proceeded to acceptance, suggesting both that the purpose of the application was to concoct evidence of a right or legitimate interest in the disputed domain name, and that the asserted intention to use the disputed domain name in relation to a business was not genuine; and (ii) one of the brokers that contacted Complainant offering to obtain transfer of the disputed domain name to Complainant for a significant sum claimed to have authority to act on behalf of Respondent and, when requested by Complainant to provide evidence of such authority, apparently arranged for Respondent to post a note to the website to which the disputed domain name resolved stating that the broker did indeed have Respondent’s authority to act on his behalf.

Respondent claimed that Complainant’s evidence of the posting of the note regarding the broker’s authority was fabricated. The minority panelist is influenced by the fact that the content management system for Respondent’s website might have had its settings configured so as to allow any member of the public (in this case, the broker) to make a post to Respondent’s website without Respondent’s consent. The majority of the Panel recognizes that this could be so, but notes that this is not what Respondent appears to be alleging. Respondent’s express allegation is that Complainant produced a “doctored screenshot”. In support of this allegation, Respondent submitted a screenshot of Complainant’s website on which appears the words “My borker [sic] is Alex”, and asserts that this shows “how any image can be doctored”. The majority understands Respondent to be asserting that Complainant superimposed an image of the post onto an image of Respondent’s webpage, to produce the appearance that Respondent had made the post acknowledging the broker’s authority. If Respondent in fact believed that the broker simply made the post himself because Respondent’s website settings were such as to permit any person to do so, the majority would have expected Respondent to expressly assert such, and to provide evidence in support of that assertion, such as screenshots of other posts made by members of the public. The fact is, Respondent did not make such an assertion and did not provide such evidence. Instead, Respondent made the claim that Complainant’s evidence was “doctored”. The majority of the Panel acknowledges that, if Complainant’s evidence was in fact “doctored”, proving that might be difficult, if not impossible at least under Policy proceedings. Nevertheless, the majority believes it can and should reach a view on whether Complainant has fabricated this evidence. Taking into account all the circumstances of the case – including, in particular, the overall impression of the probity of both parties’ evidence and claims – the majority of the Panel consider that this aspect (and all other aspects) of Complainant’s evidence is, more likely than not, genuine. Accordingly, the majority finds that Respondent offered to sell the disputed domain name to Complainant for the sum of USD 9 million.

For all the foregoing reasons, the majority of the Panel concludes, on the balance of probabilities, that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <purva.com>, be transferred to Complainant.

Andrew F. Christie

Panelist

Gérald Page

Panelist

Date: August 18, 2014

Dissenting opinion:

Registered and Used in Bad Faith

The principle of res judicata appears to be common to well-developed legal systems. The instant proceeding does not concern a strict application of that principle, which is designed to put an end to litigation, because (a) the effective invitation of the previous panel for a refiling appears to constitute something of an administrative prior-exclusion of the principle, (b) there are “new facts” presented by Complainant that raise a marginal issue of some new matter, and (c) strict application of res judicata would appear to presume that a panel rendering a decision under the Policy represents a final judicial determination, and this is open to question (inter alia, because the same matter may be referred to a court that may or may not give deference to the decision). Nonetheless, in the view of this dissenting Panelist the majority decision comes very close to a decision by the same administrative body, between the same parties, on the same underlying facts, arriving at a different conclusion. As a matter of general UDRP practice, this Panelist does not think such revisiting should be encouraged except perhaps in specific very limited circumstances. Domain name registrants would be subject to additional expense and legal insecurity regarding their rights.

The previous panel engaged in a detailed assessment and balancing of a number of factors in ultimately deciding that Complainant failed to demonstrate that Respondent registered and was using the disputed domain name in bad faith. However, the previous panel concluded that future conduct by Respondent might shed light on his intention in registering the disputed domain name and this could tip the balance against him. A UDRP panelist is charged with making a determination regarding whether a complaining party has met its burden of proof in establishing a respondent’s bad faith intent at the time of registration — which registration typically has occurred before that decision is rendered. The intent in registration, whether or not in bad faith, is based on the evidence and legal arguments that are presented by the parties. In this Panelist’s view, UDRP panelists should be wary of inviting refilings by the same complainants against the same respondents and domain names — revisiting the question of intent at the time of registration — except perhaps in very narrow circumstances.

The majority here begins by reiterating the “previous evidence”. That evidence was weighed by the previous panelist in rendering his determination, i.e., that bad faith was not demonstrated.

Under “previous evidence”, the majority refers to the fact that Respondent acquired the disputed domain name in a public auction of expired domain names. In the previous proceeding, it appears Complainant inexplicably failed to mention that prior to Respondent’s acquisition of the disputed domain name, Complainant had been the registrant. Complainant now provides “new evidence” in the form of a cut and paste email exchange that it lost its registration of the disputed domain name because, according to Complainant, its service provider, without explanation, failed to apply the requisite renewal fees to its account. It provides some evidence that it tried to remedy that, but Complainant did not follow up to get a confirmation that its registration had been renewed for the period of five years that it claims to have been seeking. It left the matter hanging. In this Panelist’s view, this particular aspect of Complainant’s new evidence demonstrates that Complainant, on notice from its service provider that registration of the disputed domain name would expire after one year, failed to ascertain and confirm that its registration would remain in effect for five years. The disputed domain name registration expired after one year.

The majority suggests that Respondent acted opportunistically by buying at auction the disputed domain name. With Complainant having failed to renew its registration of the disputed domain name, why should Respondent be faulted for having purchased it? Where is the bad faith in that? Why does this tip the balance in favor of Complainant? Respondent did not cause Complainant to give up its registration of the disputed domain name.

As a matter of “new evidence”, since conclusion of the prior proceeding, Respondent has used the disputed domain name to direct Internet users to a website stating: “Welcome to the great world of Purva.com. The website is being developed to deliver an excellent product to all viewers. Please keep coming back to enjoy the excellent product.”

This is not evidence of bad faith.

The majority focuses on two “new” matters that it views as shifting the weighting of factors to showing that Respondent registered the disputed domain name in bad faith.

The first is that Respondent allowed an application for registration of the trademark PURVA on the Australian Trademark Registry to lapse. According to the majority, this constitutes evidence that Respondent attempted to “concoct evidence” of a right or legitimate interest in the disputed domain name. Several points must be considered.

The previous panel did not consider Respondent’s filing of the application for trademark registration as establishing a legitimate intention to do business. Regarding the trademark application, the previous panel said: “This is the only indication that the Respondent may indeed be intending to use the Domain Name for the purpose of online retailing of goods, but of itself (pending registration) it gives rise to no relevant rights or legitimate interests in respect of the Domain Name”, and; “There is nothing before the Panel, other than his company’s trade mark application to support the Respondent’s claim that he has been planning to use the Domain Name for a bona fide offering of goods and services.” The previous panel concluded, “In the absence of any cogent evidence in support of his claim, the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.”

Since the application for trademark registration was not considered material in relation to rights or legitimate interests in the previous proceeding, and Respondent’s claim to rights or legitimate interests was rejected, allowing the application to lapse would not affect the previous determination.

Regarding the element of bad faith, specifically with respect to the trademark application, the previous panel said:

3. While there are aspects of the Respondent’s story, which have given the Panel cause for concern, it is the case that the Respondent (through his company) applied for registration of the PURVA word mark in Australia on December 24, 2012 approximately six weeks before the filing of the Complaint. As indicated above, in the view of the Panel, the Respondent might reasonably have believed that the use of the name ’Purva’ in Australia (or indeed online) as a trade mark for the retail sale of Jaini/Hindu religious literature would be unlikely to infringe the Complainant’s trade mark rights, even if he was aware of those rights.

Additionally, the following is quoted from the previous decision: “On February 7, 2013 the Complaint was filed with the Center. On the evidence before the Panel, this is the first occasion upon which the Respondent must have been aware of the Complainant’s cause for complaint.” According to the previous decision, Complainant first visited Respondent’s website identified by the disputed domain name on January 16, 2013, discovering it to be problematic, and notifying Respondent. Thereafter, Respondent modified the website.

There are many good faith reasons why a party may elect to allow a trademark application to lapse. He may, as Respondent contends here, change his mind about whether it is appropriate to register a term with religious significance. He may have contemplated a particular business plan, and changed his mind, deciding not to pay trademark registration fees.

It is possible to view the decision by Respondent to allow the application for trademark registration to lapse as evidence that he did not seriously intend to establish a business selling religious items. But, using a domain name to establish a business is not a prerequisite to avoiding a finding of bad faith.

If the previous panel had relied on the trademark registration application to establish rights or legitimate interests on the part of Respondent, this dissenting Panelist would consider its lapse a material fact on that issue. It might not alter the balance sufficiently to change the outcome of a determination. That would depend on other factors. But, on the issue of bad faith the lapse of the trademark application does not to this Panelist appear to materially alter the balance initially struck by the previous panel.

The second “new fact” relied on by the majority to shift the balance in favor of bad faith is the approach to Complainant by Alex Domain Broker (hereinafter “Alex”) offering to acquire the disputed domain name from Respondent for a sum of USD 9 million. The majority states that disproving the “legitimacy” of this aspect of Complainant’s evidence “might be difficult, if not impossible.” The majority concludes “this aspect (and all other aspects) of Complainant’s evidence is, more likely than not, genuine. Accordingly, the majority finds that Respondent offered to sell the disputed domain name to Complainant for the sum of USD 9 million”.

To the dissenting Panelist, the correspondence between Alex and Complainant appears as a “scam” attempt by a third party (i.e., Alex), and there is no credible evidence in the case before the Panel that Respondent participated in this exchange.

The correspondence from “Alex” begins with reference to “internet records” as a source of information, and an offer from Alex (in broken English) to broker a transaction. This is followed by a reference to negotiating with a Chinese porn company, and awareness by Alex that Complainant lost a UDRP dispute. About six months pass before Alex’s next email message, when he sets on a price of USD 9 million, plus brokerage fee. Alex says he asked Respondent to post his name on Respondent’s website. What appears on Respondent’s website in December 2013 is some form of “blog” posting using language the dissenting panel finds odd:

Alex Dselva is my only sole broker.

Alex Dselva is my only sole broker.

And I had never given authority and spoken to any other broker except Alex.

Nor I’ll give this authority to anyone in future too except Alex.

Deal given only by Alex will be last and final.

Dear Alex please try to make things quick. And please ask your man I can’t confirm each and every time as I have other works too.

Posted by World at 12.16

Complainant expresses strong suspicion of Alex, asking why Respondent’s name is not mentioned anywhere, and without providing any detailed instructions. Complainant subsequently breaks off discussions with Alex, accusing him of acting on behalf of Respondent, while having extensively questioned his authority to act on behalf of Respondent.

The dissenting Panelist is not in a position to act as Internet forensic science expert. However, the dissenting Panelist observes as a matter of “administrative panelist knowledge” that content management systems (CMS) in wide public use (e.g., Drupal) offer routine implementation of “blog” posting blocks or pages of one form or another, and that such blocks or pages typically allow third party Internet users to post information. (Such CMS features can be adapted in myriad ways in terms of user access and other functions. The “default” set up will differ from program to program.) The fact that “Alex” was able to post a statement on Respondent’s webpage does not to the dissenting Panelist appear dispositive of anything. It does not transform a poorly phrased set of statements that are practically nonsensical into a convincing representation of Respondent.

Like the majority, the dissenting Panelist is not in a position to “disprove” the legitimacy of Complainant’s proffered evidence. But, to the dissenting Panelist evidence sufficient to transform a finding that Complainant had failed to establish Respondent’s bad faith into a decision that Respondent acted in bad faith must be credible. The dissenting Panelist does not find this evidence proffered by Complainant credible toward establishing Respondent’s alleged bad faith.

The dissenting Panelist does not suggest that Complainant doctored the screenshot on which Alex’s assertion of exclusive broker rights appears, although Respondent has suggested this might be the case. Respondent has flatly denied having anything whatsoever do with Alex, and Respondent’s suggestion might be considered in that light. In the dissenting Panelist’s view, the entire context of the approach by Alex strongly suggests that he was attempting to extract payment from Complainant under false pretenses. Alex was certainly acting in bad faith. What is missing is a convincing link to Respondent.

As the majority has focused on these two elements, the dissent will not go through each bit of material provided by Complainant. None of the approaches by “brokers” are linked by meaningful evidence to Respondent. The fact that a few individuals read the decision of the previous panelist and decided to approach Complainant as “brokers” does in the dissenting Panel’s view not implicate Respondent, nor is it evidence of wrongdoing by Respondent.

Complainant allowed its registration of the disputed domain name to expire, and failed to mention that in its previous complaint. It has provided “new evidence” that it allowed registration of the disputed domain name to lapse, being last notified by its service provider that it would lapse when it did. Respondent thereafter acquired the disputed domain name at auction. Respondent, before he acquired the disputed domain name, was not under an obligation to ask Complainant whether it may have made a mistake. Respondent might plausibly have concluded that Complainant no longer wanted the disputed domain name.

There was plenty of indication in the decision by the previous panel that Respondent has been involved in registering and trading in domain names, a fact that Respondent acknowledged. There were a number of disputed facts at issue in the previous decision. This dissenting Panelist does not express a view on whether he would have balanced the elements the same way as the previous panel. But, the previous panel decided that Complainant had failed to demonstrate that Respondent registered and was using the disputed domain name in bad faith. The question in this proceeding should thus be whether new evidence has been introduced that alters that determination. Respondent has acknowledged that he allowed an application for trademark registration to lapse. In the dissenting Panelist’s view, that does not transform his conduct into “bad faith”. Respondent has flatly denied any involvement with the “brokers”. There is no meaningful evidence that he was in any way involved with them. That does not prove that he was not involved with them. It means that the evidence does not support that he was. There is, in this dissenting Panelist’s view, a failure of proof.

This dissenting Panelist would deny relief to Complainant.

Frederick M. Abbott

Presiding Panelist (Dissenting)

Date: August 18, 2014

A survey of the approaches followed among European legal systems, including the British Commonwealth system, can be found in a Decision of the Technical Board of Appeal 3.3.1 of the European Patent Office, Proctor & Gamble v. Unilever, May 3, 1996, where it summarizes:

2.5 Without needing to consider the laws of the Contracting States in more detail, in the Board’s judgment, it can be seen from the above that any generally recognized principle of estoppel by rem judicatam for the Contracting States is of extremely narrow scope as it will involve something that has been:

(a) judicially determined

(b) in a final manner

(c) by a tribunal of competent jurisdiction,

(d) where the issues of fact are the same,

(e) the parties (or their successors in title) are the same, and

(f) the legal capacities of the parties are the same.

2.7 As stated above, the principle of res judicata is based on public policy that there should be an end to litigation.

Excerpted in Frederick Abbott, Thomas Cartier and Francis Gurry, International Intellectual Property in an Integrated World Economy, 2d ed. 2011, Aspen Casebook Series (Kluwer 2011), pgs. 277-83.

It is neither necessary nor appropriate to revisit the weighing of those factors by the previous panelist insofar if there is nothing “new” to change the balance. The dissenting panel does not share the view that there is such new evidence.

The previous panel did not make a finding that Respondent was aware of Complainant’s trademark rights in India when he filed his trademark application in Australia. Complainant has provided evidence of correspondence it sent in December 2012 to a proxy/privacy shield enterprise under which the disputed domain name might have been registered. That correspondence is inconclusive regarding whether Respondent might have received any notice of Complainant’s inquiry. It also appears inconsistent with the finding of the previous panel that Complainant appears to have first become aware of Respondent’s website in January 2013. The previous decision does not discuss this correspondence, but if Complainant had been aware of and in contact with a registrar in December 2012, this is information that was in Complainant’s possession before the previous proceeding. It does not involve an event occurring after the previous decision.

The dissenting Panel visited the website of IP Australia, finding that the fees for an application vary (depending on the route) somewhere between AUD 120 and AUD 370, and generally on the lower side of that. As the discussion of the potential “sale” of the disputed domain name continues, it is useful to bear in mind these virtually insignificant figures in relation to the price that Respondent is allegedly attempting to extract from Complainant, i.e., USD 9 million.””

 


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