A trademark’s degree of registrability or its ability to sustain a suit or enforce a…
Recently, granting a major victory to our client, the World Renowned Data Compression Software System provider win.rar GmbH, Administrative Panel, WIPO under UDRP, in its recent decision vide Case no. D2015-0398 issued transfer of disputed domain name www.winrar.com to win.rar GmbH. This article is to highlight the recent UDRP dispute wherein the Complaint was re-filed by win.rar GmbH over the long-disputed domain name winrar.com adopted by one Win Road Assistance Repairs Private Limited. The Copy of the Decision can be accessed here.
Brief Facts Of The Case
- The complainant in the present case is win.rar GmbH who is the holder of exclusive worldwide distribution rights for well-known WinRAR software by Mr. Eugene Roshal and Mr. Alexander Roshal. Complainant holds the trademark for the trademarks WinRAR in various countries including India. While Respondent Win Road Assistance Private Limited has registered the domain name winrar.com since 2006.
- Being aggrieved by the adoption of the domain name winrar.com which comprises of the complainant’s well-known trademark WinRAR causing confusion and deception to the potential users of the Complainant due to alleged misuse of the domain name, Complainant had filed its first complainant under UDRP in the year 2007 for transfer of domain name winrar.com to the complainant which was denied by the panel as the complainant was not able to prove bad faith involved in the adoption of the domain name winrar.com by the Respondent.
- However, Complainant re-filed the Complaint under UDRP in March 2015 on the ground of certain new relevant actions by the Respondent in respect of the domain name winrar.com and otherwise since the earlier decision by the panel in 2008 vide case no. D2007-1768. The re-filed Complaint was duly accepted by the Panel for adjudication.
Arguments On Behalf Of Complainant:
The following contentions were raised by the complainant in order to prove the essential elements under UDRP:
- It was contended that the Respondent was making illegitimate use of the domain name winrar.com by projecting counterfeit links for download of the renowned WinRAR software of the applicant which was causing irreparable loss to the complainant and its hard-earned reputation. Thus the respondent has tarnished the image of the Complainant by diverting customers away.
- It was further contended that one of the directors of the Respondent had registered trademark with the word Winrar under class 42 for software in due course of time which is contradictory to what has been claimed by the Respondent in the earlier case on the basis of which earlier decision was rendered. The Respondent has contended in the earlier proceeding that the domain name was adopted for their automobile services and has nothing to do with the Complainant’s business of Software while soon after the decision registered the trademark with the word Winrar with the sole intention to circumvent the policy. Hence the malafide intention and bad faith of the Respondent was prima facie.
- It was further argued that one of the directors of the Respondent incorporated another Company in India with the name Winrar Software Private Limited dated 28th September 2008 soon after the earlier decision in their favor; contrary to what had been claimed in the earlier proceeding. This incorporation of the Software Company with the Complainant’s trademark was with the sole intention to circumvent the policy and legitimize the illegal deeds of the Respondent.
- It was further put on record that the Respondent’s associate corporate named Compsys Domain Solutions Private Limited and Compdot Internet Services Private Limited had registered various third party domain names in bad faith and had been a party to various UDRP proceedings as Respondents. Pertinently in these disputes, all the domain names were transferred to the respective complainant. This reveals that the respondent is engaged in a pattern of cybersquatting conduct giving rise to bad faith registrations and use of the domain names.
Arguments On Behalf Of Respondent:
Respondent’s contentions were as follows:
- The Respondent contended that the registered the disputed domain name was a shortened version of a long business name: “WIN” for Win, “R” for “Road”, “A” for Assistance, and “R” for repairs.
- The Respondent claimed that they have no knowledge of the Complainant’s alleged trading activities. It was further contended that the Respondent’s rights were clearly established in earlier case D2007 1768. A director of the Respondent filed for trademarks nos. 1850490 and 1850491 “knowing the devious ways of the Complainant”.
- The Respondent contended that they had been commonly known the name “WINRAR”. The board of the Respondent’s shop is headed “WINRAR TYRE PLUS”. The name “Winrar” also appears on advertising leaflets, business cards, invoices, letterhead, cheques, bank account, bank statement. Accordingly, the Respondent is conducting an active business and its name was not designed to circumvent the UDRP without any intention to carry out a legitimate business. The Respondent operated a genuine website at the disputed domain name for Winrar Garage since 2008.
- The Respondent further argued that their business is “very local in nature” and so the Respondent allows other advertisers onto its website as is normal practice on the Internet. As traffic from outside India was of no benefit to the Respondent, it decided to allow partial use of its site by advertisers offering the Complainant’s actual software, not counterfeit versions. The Complainant does not provide a commission to resellers when users upgrade to its paid software; instead, the Complainant allows resellers to bundle its free software with a toolbar or other software. There are hundreds of such sites. The Complainant, not the Respondent, has derived all revenue from the sale of the software. A few months ago the Respondent stopped advertising the Complainant’s software and the loss of revenue must have prompted the Complainant to file this case. The Respondent has never contacted the Complainant offering to sell the disputed domain name. It was the Complainant’s representative who has contacted the Respondent.
- The Respondent further contended that they have not disrupted the Complainant’s business or sought to do so. The parties are in no way competitors. The Respondent reiterated that it registered the disputed domain name to expand its own business, not to block the Complainant or create a likelihood of confusion with the Complainant’s marks. On the contrary, it was contended that the Complainant was guilty of reverse domain name hijacking (“RDNH”). The Complainant has contacted the Respondent with different offers for the disputed domain name, which have failed, and now it is again resorting to the UDRP when there are no fresh grounds.
The Panel concluded that the incorporation of Winrar Softwares Private Limited in 2008 and the registration of the 2009 Trade Marks for “Winrar Software” and “Winrar Toolbar” by the Respondent’s director following the Roshal Case did not assist the Respondent. In the Panel’s view, those steps were likely to have been intended to circumvent the UDRP by projecting a veneer of respectability over the Respondent’s proposed offering of the Complainant’s software under the disputed domain name, which comprised the Complainant’s unadorned name and trademark.
The Panel further concluded that the Respondent has no rights or legitimate interests in the disputed domain name and the same had been adopted in bad faith and that the Complainant has therefore established all the three-element of paragraph 4(a) of the Policy. Hence the Domain name winrar.com was ordered to be transferred to the Complainant.
About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates, and IP Attorneys and can be reached at [email protected]