World Intellectual Property Organization panelist finds case was brought in bad faith.
An Indian matrimony website has been found (pdf) to have tried reverse domain name hijacking the domain jodii.com, which is owned by competitor Matrimony.com.
Jodi is a Hindu term for a pair or couple that many matchmaking sites use.
The Complainant in this case, Luxury India Solutions PVT. LTD., operates a website at JodiSearch.com. It tried to argue that jodii.com was confusingly similar to its marks for JodiSearch.com and JodiSearch Matrimonial.
Given the meaning of Jodi, it failed to show that the domain name jodii.com was confusingly similar to its marks.
World Intellectual Property Organization panelist Shwetasree Majumder found the case was brought in bad faith. The panelist listed four reasons, and I re-ordered them below because two of them represent the Complainant’s apparent failure to examine the domain’s registration date. First:
- the Complainant, which is represented by counsel, should have appreciated the weakness of its case and the admitted fact that the term “jodi” which is the only common element in the disputed domain name and its mark JODISEARCH.COM, is a generic term. The Complainant admits that the term “‘jodi” is common to trade fails and then in the same breath asserts that the Complainant’s mark JODI has acquired goodwill and reputation. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, past panels have held that a represented complainant should be held to a higher standard.
- the Complainant had clear knowledge of the Respondent’s rights or legitimate interests in the disputed domain name. By way of letter dated May 25, 2023 the Respondent had drawn the Complainant’s attention to the Indian Madras High Court order dated July 14, 2022 in CS (Comm. Div) No. 122 of 2021 between M/s. FreeElective Network Private Limited vs M/s. Matrimony.com Limited (the Respondent). In this order, the court ruled in the Respondent’s favour and held that the Plaintiff is entitled to protect the composite mark being JODI365 but not the element “Jodi”. The Complainant chose to ignore/ sidestep this judicial precedent which at its core upholds the Respondent’s rights and interests under its business website “www.jodii.com”.
The other two warrant further examination:
- the Complainant knew or should have known that the Respondent was not acting in bad faith, given the fact that registration of the disputed domain name is well before the Complainant acquired trademark rights. The disputed domain name was registered in the year 2010 and the Complainant acquired trademark rights in JODISEARCH.COM and also commenced operations only in the year 2014. The Panel presumes this to be the reason why the Complainant has cleverly abstained from mentioning the date of registration of the disputed domain name in its Complaint.
- the Complainant has made a false statement with an attempt to mislead the Panel by stating that “the disputed domain name is identical to the Complainant’s prior registered domain name jodisearch.com”. The Complainant is well aware that its domain name <jodisearch.com> was registered on November 12, 2014 and hence is not prior to the disputed domain name which was registered on July 24, 2010.
While the domain name was indeed registered in 2010, it appears that the Respondent didn’t acquire it until much later. Historical Whois records suggest the Respondent acquired the domain name in 2021.
But the Complainant didn’t argue this and seems to have built its case on the assumption that the domain was registered before it had any trademark rights in terms related to jodi.
© DomainNameWire.com 2023. This is copyrighted content. Domain Name Wire full-text RSS feeds are made available for personal use only, and may not be published on any site without permission. If you see this message on a website, contact editor (at) domainnamewire.com. Latest domain news at DNW.com: Domain Name Wire.