The Complainant is Titan Company Limited, India, represented by Anand & Anand, India.
The Respondent is Danny Sullivan, United States of America, self represented.
The disputed domain name <tanishq.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. The Response was filed with the Center July 10, 2021. On July 13, 2021, the Complainant filed a supplemental filing with the Center.
The Center appointed Nick J. Gardner, Harini Narayanswamy, and The Hon Neil Brown Q.C. as panelists in this matter on August 11, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On August 26, 2021, the Center extended the due date for the Panel to provide its decision until September 9, 2021
The Complainant is an Indian Company. The Respondent has not challenged the material set out in the complaint about the Complainant and its business (save to say he does not accept its reputation extends outside India). The Panel accepts the following as factually accurate.
The Complaint operates a business in India selling watches and jewelry under the brand name TANISHQ which was coined by marrying the Hindi words “TAN” meaning body and “NISHK” meaning a gold ornament. The business started in 1994.
The Complainant is one of the largest retail jewelers in India. It appears to have at least several hundred stores in cities spread across many cities in India.1
It operates an internet presence via its website linked to the domain name <tanishq.co.in>. 2
In the most recent financial year the Complainant’s turnover was Indian Rupees 1860 crore (which is approximately equal to USD 253 million).
It has received numerous awards (for example Top Indian Company award under the Gems and Jewellery Sector at the Dun & Bradstreet Corporate awards, 2014).
The Complainant owns various registered trademarks for the term TANISHQ in both word and device form. The Panel has not found it particularly easy to identify full details of these marks as the material filed with the Complaint does not provide any dates in respect of the listed trademarks. However by way of example a search of the Indian registry of trademarks confirms that the Complainant owns the word mark TANISHQ registration no 643126 applied for on October 17, 1994 and registered on November 25, 2003 in class 14 in respect of “watches, clocks, timepieces, horological and chronometric instruments, accessories and parts thereof, jewelry, precious metals and their alloys and goods in precious metals and quoted”. By way of further example the Complainant owns US registration no 2323656 for a stylised form of the word TANISHQ together with a logo, registered on February 29, 2000 in relation to jewelry clocks and watches. These trademarks are referred to collectively as the TANISHQ trademark in this decision.
The Disputed Domain Name was originally registered on June 5, 1998.
The Respondent purchased the Disputed Domain Name at an expired domain name auction on July 13, 2018 for USD 860. The filed evidence has no information about how it was used between June 5, 1998 and the date the Respondent purchased it (but see the dissenting opinion of Neil Brown QC for further information on this issue).
Although at one stage subsequent to the Respondent’s purchase it appears it may have been linked to an automatically generated parking page with click through links,3 it would seem that shortly after his acquisition the Respondent has linked it to a website (the “Respondent’s Website”) which contains text about an ancient Egyptian city which was apparently known as Tanis in Greek. The text is divided into four sections, each about an A4 page of text long with around 12 footnoted source references. The first section of this text commences “Tanis: The Lost City. Unlike Atlantis, the Lost City of Tanis is as real as it could get. For a long time, many thought of the existence of the city was just a legend. Modern Egypt calls the place Sân el-Hagar; But to the ancient Egyptians, this city was known as Djanet, the capital of Egypt of the 21st and 22nd dynasties during the Third Intermediate Period (1069-525 BCE). It was a wealthy commercial center along the Nile Delta northeast of Cairo. And the name Tanis was actually its Greek name. But what made Tanis great and how did this great city become ‘lost’?”. The remaining text continues in a similar vein.
On February 21, 2021 the Complainant commenced an email exchange with the Respondent enquiring about the availability of the Disputed Domain Name. Emails were sent from a named individual who described himself as the IT manager corporate for Titan Company Limited. That exchange concluded with an email from the Respondent dated February 24, 2021 which read as follows: “hi Damodaran - I had some talk with my family members about this domain name. Honestly, it’s my preference to just keep the domain name. I’m interested in Egyptian history, and I have plans to visit Egypt soon and develop the current website further.
Honestly, I feel very humble and embarrassed to quote a price for this domain name, but I would be willing to sell the domain name for $50,000. This would provide for our future travel plans, and additionally allow us to put aside some funds for deposit on a new apartment, which my wife feels very excited about. Let me know your thoughts on this. Danny.”
On August 13, 2021 the Presiding Panelist carried out limited factual research in the form of a search of the Center’s publicly available database of previous WIPO UDRP decisions. That search was for the character string “Danny Sullivan”. The results of the search identified four previous UDRP cases (the “Previous Cases”) with a named respondent identified as “Danny Sullivan”. Details are as follows:
Damsté advocaten – notarissen v. Danny Sullivan WIPO Case No. D2017-1794. The domain name at issue was <damste.com> and the respondent identified as “Danny Sullivan of Pittsburgh, Pennsylvania, United States of America”. The complaint was denied by a three-person panel.
Infraestructura Energetica Nova, S.A.B. de C.V. v. Danny Sullivan WIPO Case No. D2019-1942. The domain name at issue was <ienova.com> and the respondent identified as “Danny Sullivan, United States of America”. The complaint succeeded.
Stöbich Brandschutz GmbH v. Danny Sullivan WIPO Case No. D2019-2759. The domain name at issue was <stobich.com> and the respondent identified as “Danny Sullivan, Pennsylvania, United States of America”. In this case (unlike the other three Previous Cases) no response was filed. The complaint succeeded.
Phumelela Gaming & Leisure Limited v. Danny Sullivan WIPO Case No. D2020-0245. The domain name at issue was <soccer10.com> and the respondent identified as “Danny Sullivan, United States of America”. The Complaint was denied by a three-person panel.
The significance (or otherwise) of the Previous Cases4 is discussed below and in the dissenting opinion of Neil Brown QC.
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is identical to the TANISHQ trademark.
The Respondent has no rights or legitimate interests in the term “TANISHQ”.
The Disputed Domain Name has been registered and used in bad faith. In this regard the Complainant says the Respondent’s Website is clearly a device intended “to give an explanation for the adoption and registration of the disputed domain, which argument holds no merit whatsoever. It is crystal clear that the adoption is a bad faith adoption and this is a clear case of domain squatting without making any legitimate use of the domain and it is being wrongly held by the Respondent and he is also offering to sell the same to the Complainant at a very high price i.e. USD 50,000”.
The Respondent says he is “an active developer of online businesses”. He goes on to say that “In the past, I have developed many different kinds of websites and online businesses. One of my most successful projects has been a project called LocalPhilippines.com. The project was started in 2007 and the purpose was to create a directory of all of the local festivals and travel destinations in the country of Philippines.
LocalPhilippines sourced content from local experts across the country…….. Over time, the project developed quite a bit of unique content and became a popular travel portal for The Philippines. Since the start of the project, it has had over 2,400,000 unique visits, and over 9,000,000 page views, according to Google Analytics data from 2007 to 2021 The project has been a modest financial success as a result of display advertisements, sponsored listings, and selling travel and packages for local festivals”.
He then says “Based on the success of LocalPhilippines, I started to think about developing travel websites for other interesting adventure travel destinations as well. One region that had long been fascinating to me were the ancient Egyptian historical and archeological sites. My thinking was that a similar model to what was developed with LocalPhilippines could be successful. I could find local experts at different historical areas within the Egyptian Nile River Delta region. The local experts and freelancers would provide information on accommodations and information on what archeological sites were in each region. Eventually the website would also allow for booking of accommodations and unique tour experiences. The website would also benefit from re-using the custom developed travel content management software system that was used for LocalPhilippines”. He explains that he had to find a domain name for this project and he regarded it as important to use a preexisting domain name as that is likely to be pre-indexed in search engines which has various advantages. He then says as follows: “I picked ‘Tanis’ as a main keyword to target, because the ancient city of Tanis is one of the most famous archeological sites in the Nile River Delta, because of its feature in the popular adventure movie from my childhood - Indiana Jones, Raiders of the Lost Ark. In addition to having personal meaning, the name ‘Tanis’ is also widely associated with the Egyptian Nile River Delta region as well as with archeological history and exploration. To find a domain name, I searched different expiring domain websites for the keyword ‘anis’. I found TanisHQ.com on Namejet.com, a website that lists expiring domain name inventory. The domain name was first registered in 1998, and thus qualified as an ‘aged domain’, which would help the website to be found by search engines much faster, compared to a brand new domain name registration. I also liked that the name included HQ as a suffix. HQ is a common suffix added to the end of a domain name, when the root domain name is unavailable to be registered. HQ is short for headquarters. According to Merriam Webster dictionary, the definition of ‘headquarters’ is “the administrative center of an enterprise I liked that adding the HQ suffix gave the website an official feeling and also that it was easy to remember.”
The Respondent also says he would have preferred to use <tanis.com> but that was not available.
The Respondent says that the auction for <tanishq.com> completed on July 13, 2018, and he was the winning bidder, paying a price of USD 860.
The Respondent goes on to say in relation to the Complainant “In fact, while the complainant claims to be a famous brand, they seem to have no presence in the United States or specifically Pittsburgh Pennsylvania, where I live. In the complainant's submission, they claim to have many retail locations and have won many awards, but there is no mention of any awards or retail locations in the United States. Additionally, all revenue and earning claims are made in Indian currency, and not in United States currency. Maybe the complainant’s company is famous among Indians who have moved to the United States, however the complainant has not provided any evidence that they operate or are well known in the United States where I reside”
And
“I previously was not aware of their brand of jewelry, and it seems to have no presence outside of India. It seems very strange that the complainant claims their brand started in 1994, but had no interest in the domain name, until suddenly being interested in it in 2021, 27 years after their brand started. Now, after I have invested in building my travel project, they suddenly show up and have an interest?
The complainant showed an email exchange in which I asked [USD] 50,000 for the domain name as evidence of bad faith. Firstly, the complainant initiated contact with me, and discussions relating to purchase. Furthermore, I have explained here that, finding a suitable replacement domain to build on, that both had suitable branding and similar SEO characteristics would be very difficult. It would take time, money, and luck to be able to find another domain name that would suit the project. Facing such uncertainty, it should be clear to see why I value the domain name so highly.”
The Respondent also makes various other points particularly about the parking page the Complainant refers to but the Panel has not found it necessary to consider these points in any detail.
Procedural Matters – Complainant’s Supplemental filing
The Panel declines to admit the Complainant’s Supplemental filing. It appears to be largely repetitive of matters set out in the Complaint, and to the extent it contains any new material that material could have been included in the Complaint.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has rights in the TANISHQ trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent says that (i) above applies. He says he acquire the Disputed Domain Name in anticipation of developing a travel/ Egyptian archaeology related website and without knowledge of the Complainant’s TANISHQ trademark.
For reasons discussed below in relation to bad faith, a majority of the Panel comprising panelists Nick Gardner and Harini Narayanswamy (hereafter described as the “Panel majority”) do not accept that explanation and conclude that the Respondent purchased the Disputed Domain Name because it corresponded to the Complainant’s TANISHQ trademark (see below). Acquiring a domain name because it corresponds to the Complainant’s trademark cannot establish a legitimate interest. Accordingly the Panel majority (Neil Brown QC dissenting for the reasons set out in his dissenting opinion) finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present case the Panel majority conclude that it is more likely than not that the Respondent acquired the Disputed Domain Name being aware that it corresponded to the Complainant’s TANISHQ trademark and that would afford him the opportunity to sell the Disputed Domain Name to the Complainant for a price greater than his out of pocket costs incurred in obtaining the Disputed Domain Name.
The Panel majority recognises that this finding necessarily involves disbelieving the Respondent when he states he had no knowledge of the Complainant’s TANISHQ trademark when he acquired the Disputed Domain Name. The Panel majority is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are not readily suited to deciding disputed questions of fact or matters of truth or falsehood. That does not however mean a panel has to accept without scrutiny a claim by a respondent to lack knowledge of a complainant or its trademark. Were that the case any UDRP complaint could be defeated by an untruthful respondent. The Panel majority considers it is a question of evaluating all the available evidence and circumstances, including where appropriate forming reasonable inferences based on the available material, and reaching a conclusion as to whether or not, on the balance of probabilities, the Respondent is to be believed. The Panel majority consider there are a number of factors which, taken cumulatively, mean it is more likely than not to mean the Respondent’s claim to have been unaware of the Complainant’s TANISHQ trademark is untrue. Those factors are as follows:
1. Despite the Respondent’s detailed account as to how and why he chose <tanishq.com> as a domain name for a travel or archaeology related website related to Egypt it does not strike the Panel majority as a particularly good name for that purpose. It is not in the Panel majority’s opinion particularly easy to spell, pronounce or remember and the Panel majority doubts that a significant proportion of people will be aware of the ancient Egyptian city whose Greek name is (or was) Tanis. Contrast the domain name the Respondent says he used for his earlier project of a travel site concerning the Philippines: <localphilippines.com>.
2. The Respondent has not produced any evidence to show he has taken any steps in the three years he has owned the Disputed Domain Name to develop travel related content for the website he says he intends to develop. He seems to suggest this may be because he has been unable to visit Egypt because of the Covid pandemic but the Panel majority does not think this really explains why nothing at all has been done.
3. In contrast he has produced a relatively limited website linked to the Disputed Domain Name describing the ancient Egyptian city of Tanis in four sections. It appears to the Panel majority that the content of this site could have been produced after a relatively short period of Internet research. It is unclear to the Panel majority why the Respondent would have though this content appropriate if he was envisaging a travel related website being linked to the Disputed Domain Name. It would have been just as easy to develop at least some outline content for the envisaged website.
4. Although the Respondent has described in some detail the steps he says he took in the course of obtaining the Disputed Domain Name he has been completely silent as to whether or not he carried out any Internet searches (via Google or other search engine) on the term “tanishq”. It would seem to the Panel surprising if he had not done so – why buy an expired domain name for a new project without finding what general usage of the term in question exists? Had he carried out such a search (and the Panel majority infers it is more likely than not that he did do so) the Panel majority thinks it inevitable that he would have identified the Complainant and its TANISHQ trademark. A Google search carried out in the United Kingdom on August 30, 2021 produced results which over the first five pages overwhelmingly referenced the Complainant – the only exceptions were a few links to third party jewelry suppliers, presumably generated by the use of tanishq as a keyword. Of course had the Respondent really been set upon developing an Egypt related website and then identified that his chosen domain name corresponded to a trademark owned and used by a substantial Indian business one would have expected him to conclude the name was not a good choice and to have sought an alternative name. He did not do so.
5. The Panel majority regards the existence of the Previous Cases and the facts they reveal about the Respondent as a relevant factor going to the credibility and truthfulness of the Respondent. The Panel majority does not think there can be any serious doubt but that these are cases where the named respondent is the same individual as the present Respondent. The significance of the cases is that they show, in the individual responses as described in each decision (except WIPO Case No. D2019-2759 where no response was filed), a significantly different picture as to the Respondent’s business activity as compared to what he has told the Panel in the present case. So in WIPO Case No. D2017-1794 the Panel summarised the Respondent’s own description of his business as follows: “The Respondent actively acquires generic domain names including at least 80 domain names which comprise surnames. The domain names are generally used for pay per click advertising and/or are offered for sale. The Respondent has in mind to create domain names with genealogical information relating to each surname but has not yet developed such a system”. In WIPO Case No. D2019-1942 the Panel summarised the Respondent’s own description of his business as follows: “The Respondent says he is a domain name investor and owns over 15,000 “.com” domain names”. In WIPO Case No. D2020-0245 the Panel summarised the Respondent’s own description of his business as follows: “The Respondent asserts that he is an active investor in numerous domain names, which he acquires using software to identify attractive combinations and trends”.
To be clear the Panel majority does not consider there is anything wrong with being an active investor in domain names for resale or in having a large portfolio of such names. What however is relevant to the present case is the Respondent’s failure to inform the Panel that was his business. The Panel infers he must have done so deliberately and he did so because he considered this information, had the Panel been aware of it, would have cast doubts upon his stated response explaining how he was “an active developer of online businesses” and was acquiring the Disputed Domain Name to use for an Egyptian related travel website. Indeed the Panel majority finds it difficult to understand how the Respondent could have accurately certified in his response submission as follows: “The Respondent certifies that the information contained in this Response is to the best of the Respondent’s knowledge complete and accurate….” There are also a number of relevant similarities between in particular WIPO Case No. D2019-1942 (supra) and the present case – these are discussed below.
6. Once the Respondent’s business as an active investor in domain names is understood his email correspondence with the Complainant is disingenuous at best. He portrays himself as reluctantly and with some embarrassment seeking a significant sum (USD 50,000) for the sale of the Disputed Domain Name as he really wanted to keep it for his own business. In reality the Panel majority concludes that he is a businessman interested in selling the domain name as his stock in trade. The panel majority concludes the sum he sought accurately reflects his assessment of the value of the Disputed Domain Name to the Complainant and that likely value was his motivation when he acquired the Disputed Domain Name.
7. The Panel majority does not think it significant that it was the Complainant who first approached the Respondent seeking to buy the Disputed Domain Name. As the panel observed in WIPO Case No. D2019-1942 (supra): “That the Respondent did not actually approach the Complainant to sell the disputed domain name for that figure, in the Panel’s view could rather represent a risk mitigation strategy by the Respondent – while he, being experienced in such matters, would know full well that the Complainant, as the only party who might consider such a sum worth paying, would eventually come across it and approach him, and that in circumstances where other companies would be unlikely to undertake business using the Complainant’s mark.”
8. The Panel majority accepts that the filed evidence only establishes that the Complainant has a reputation in India. That does not however matter if the conclusion is reached that the Respondent was nevertheless aware of the Complainant’s trademark and selected the Disputed Domain Name because it corresponded with the Complainant’s trademark. Again as the panel observed in WIPO Case No. D2019-1942 (supra) “That it does not represent a consumer brand in use in literally the Respondent’s backyard does not mean that the domain name was not (or should not have been) known to the Respondent at the time of registration. That it is not registered in the United States is also not determinative – the question is whether on the balance of probabilities the Respondent himself knew of the trademark and the Complainant’s goodwill vested in it. All the circumstances must be taken into account to arrive at an answer to that question. As the Panel sees it, one very relevant circumstance is that in this case a Google (or Chrome) search for ‘ienova’ immediately identifies the Complainant as the owner of that brand and indeed occupies the entire first page of results. A similar result occurs on the Bing search engine (with one result for Lenovo and one for Hitachi – the latter possibly based on keyword purchase).”
Taking all of the above factors into account the Panel majority concludes that it is more likely than not that the Respondent acquired the Disputed Domain Name because he was aware of the Complainant’s TANISHQ trademark, that he acquired the Disputed Domain Name because of its likely value to the Complainant and that he anticipated he would be able to sell it to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Name. The Panel majority concludes that it is more likely than not that the Respondent’s Website is a device intended to confer a defensive veneer of explanation should a UDRP complaint be filed against the Respondent.
Accordingly, the Panel majority (Neil Brown QC dissenting for the reasons set out in his dissenting opinion) finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <tanishq.com> be transferred to the Complainant.
Nick J. Gardner
Presiding Panelist
Harini Narayanswamy
Panelist
The Hon Neil Brown Q.C.
Panelist (Dissenting)
Date: September 10, 2021
Partial Dissent of Panelist The Hon Neil Brown Q.C.
This case is one of a series of now increasingly frequent proceedings being brought under the UDRP where the complainant/trademark owner decides to claim a domain name and to argue, not that it is entitled to the domain name, nor indeed that it has a greater right to it than the registrant, but simply that it is convenient for it to own it, or that it would like to do so or that acquiring it would fit in comfortably with the complainant’s own business plans. To give it its due, the present complainant has been less coy and more transparent than some others who now make such claims. Thus, at the beginning of the dispute, the complainant has been quite open about how and why it is making the present claim and the basis on which it is making it. It gave the answer to this question in its opening communication in the dispute on February 22, 2021, when it claimed in an email to the respondent that: “We are running (a jewellery) business with the name Tanishq. So tanishq.com is the best suitable public address to us.”5 So the claim was not put that the complainant had a valid claim or indeed any claim or entitlement to the domain name, or even that the respondent had done anything wrong, but only that it would be a suitable address for the complainant’s jewellery business, and its “best suitable public address”. Thereupon, the complainant immediately initiated negotiations to persuade the respondent to sell the domain same, so that it could acquire this best suitable address for its business and, if so, the price it would have to pay for it.
When Plan A got nowhere, Plan B was called in aid and the complainant commenced this proceeding under the UDRP. It need scarcely be said that the purpose and function of the UDRP is to inquire if a claimant can make out a valid claim to a domain name, solely by evidence, and not whether it would provide a convenient address or even the “best suitable” address for the claimant. Thus, it probably should not be surprising that, as the complainant had not yet made a claim that it was entitled to the domain name, it has now produced a case that is not much better and one completely devoid of any evidence, within the normal meaning of the word, on essential issues. It has certainly not made out a case on the evidence that it has any entitlement to the domain name or that the respondent should be deprived of the domain name that it bought. In particular, the respondent’s predecessor in owning the domain name registered it on June 5, 1998, whereas the complainant did not use the word in a domain name until July 31, 2003, which should have informed everyone concerned with this case that evidence was even more than usually important.
The Complainant’s international websites
The substance of the complainant’s case, or, more accurately, the entirety of its case, for the same submission appears three times, is that it has a range of trademarks for TANISHQ, which is true, and that the trademark and the Tanishq name have such a global reach and are so prominent and well-known internationally and “famous”, that the respondent in Pittsburg must have known of this famous Indian trademark and acquired the domain name simply to copy it and blackmail the complainant into buying it. But that case is entirely baseless.
All of the complainant’s purported evidence relates solely to its activities in India and none of it relates to its activities in any other country, with the possible exception of neighbouring Dubai which can scarcely be said to be evidence of an international footprint that could have been detected from Pittsburg where the respondent is domiciled. The Complaint is not short of allegations about its fame, but allegations are not evidence, and it can safely be said that there is no evidence that makes out the complainant’s case under the UDRP that it is internationally famous. Nor is this some mere technical omission. It is a matter of substance that the complainant has not shown any evidence at all from which an inference could be drawn that the respondent must have or probably would have or should have or even could have been aware of the trademark when he registered the domain name.
The complainant’s argument is that it has set up websites around the globe to promote its trademark and that, as a result, its reach and renown are “global” and “famous”. That, and similar allegations, are simply not borne out by any evidence and should not be accepted.
It is true that the Complainant has registered a series of domain names that it has purported to use for a series of websites that it claims have made it famous. It is apparent from the impressive list set out three times in the Complaint that the domain names have been registered, although the first of them was registered on July 31, 2003, five years after the Tanishq Corporation had registered the disputed domain name for the first time and started to use it to announce its cosmetics business6 . But when they are examined more closely than the cursory examination that they have apparently had so far, it can be seen that they do not prove this pivotal allegation of the complainant, but actually prove the opposite. It is instructive, therefore, to examine each of them, to see what they actually show about the complainant’s global reach, rather then what the complainant claims that they show.
Thus:
(a) www.tanishq.co.in, which seems to be the complainant’s main website, shows the opposite of what the complainant contends. The site deals with “320+ shops in India” and is accompanied by a location map showing where its (presumably) 320 shops in India are located and its sole shop in Dubai. The site also has a functioning store locator which, as the complainant has introduced the site into evidence and relied on it, it is legitimate for the panel to use it to see what it reveals. When the user asks it about its stores in the USA, Europe, Asia, Asia Pacific, South America, Central America, Canada, Australia and, because the respondent is domiciled there, Pittsburg, the answer in each case is: “no stores available.” This is not a good start for a company claiming to have an international presence and reputation.
(b) www.tanishq.asia leads to advertisements for wedding dresses, Indian domain name registrations and jewellery outlets but apparently not the complainant. It does not show a global reach or fame in Asia or anywhere else.
(c)www.tanishq.net does not lead to an active website.
(d)www.tanishq.ae is a website on the complainant’s single shop in Dubai.
(e)www.tanishq.co does not lead to an active website.
(f) www.tanishq.biz does not lead to an active website.
(g) www.tanishq.shop This domain name is offered for sale on the site through Go Daddy, so its role in the global presence of the complainant must be limited. So also is the fact that it seems to be a landing page or gallery of click-through advertisements. It consists of advertisements for holiday rentals in Mumbai and seemingly endless advertisements for web developers and Freelancer services in India. It advertises jewellery businesses, but apparently not the Complainant’s, and does not show a global footprint or presence for the complainant. It says nothing at all about what the complainant does and nothing at all about how the consumer may purchase Tanishq jewellery throughout the world or, indeed, anywhere in the world. The website is simply not part of a global business.
(h) www.tanishq.in does not lead to an active website.
(i) www.tanishq.us does not lead to an active website in the US, where the complainant specifically claims to be active, or anywhere else.
(j)www.tanishq.qpon does not lead to an active website.
This analysis therefore shows that the allegation that this allegedly international range of websites proves the respondent in Pittsburg must have known or would have known of the global reach and fame of the complainant when it registered the domain name is not supported by the facts or even by common sense. What the evidence shows is that the complainant is an obviously successful retailer of jewellery and similar accoutrements within India, but only within India and that is has to all intents and purpose, no international presence. When it is sought to be shown that a complainant has an international presence such that it fixes a domain name registrant with knowledge of a trademark, what has always been meant and understood widely by panellists in this field, and on very good grounds, is that a complainant needs to show a real presence and, as many decided cases have shown, panels will look for and insist on evidence being shown of local knowledge of the brand, sales in the territory, media recognition, advertising, recognition by the industry, the presence of staff and any other indicia that shows a real presence, not a demonstration of folie de grandeur, which is the best that has been shown by the complainant in this case.
It should not be forgotten that the complainant goes further and claims that each of its alleged websites not only exists but is “a fully functional Web-site”7 , an allegation that is clearly untrue and which is enough by itself to reject this entire claim. It frequently asserts that its “trademark and wordmark”8 are “well-known” 9 as they undoubtedly are, but they are well-known in India, not internationally, which is why the complainant has won a lot of awards in India but none internationally. There is no evidence offered to show that the trademarks are well known “across the globe” 10 or outside of India or that anyone in Pittsburg such as the respondent could reasonably be expected to know of their existence or alleged fame. The complainant asserts that as the result of its efforts, the trademark “enjoys an unparalleled reputation and goodwill and has acquired the status of a well-known trademark globally.”11 It is probably true that through its shops in India it has earned a well-deserved reputation “among the masses”, as it claims it has, but not outside of India, of which there is no evidence. It also asserts that its products may be bought “from these websites”12 which on the basis of the foregoing analysis, is untrue. It elevates the standing of its trademark to “famous and well-known”13 but this seems to be untrue. It says frequently that it has a fully functional website at www.tanishq.co.in, which is true, but it deals only with the 320 stores in India. It describes its trademark as showing a “widespread use and reputation worldwide” which is “global”14 , although this seems unlikely. Its reputation “inures and continues to inure to the Complainant worldwide over ….”15 The TM is also said to be known “across the globe.”16
The standing of the complainant has thus been exaggerated. To put the evidence into some sort of balance and perspective, a fair appraisal of the evidence is that the complaint is an established and substantial company and that its trademarks and brand are well-known in India, but there is no evidence at all that they would be known to anyone outside India other than in Dubai and certainly not in the US.
How then can it be said, as many panellists have asked, that an overseas respondent can be fixed with knowledge of a complainant’s trademark, and thus be found not to have a right or legitimate interest in a domain name and be found to have registered and used the domain name in bad faith, if the trademark is not known internationally and little if any effort is apparently made to make it internationally well-known? The answer is that it cannot, unless there is at least some evidence that gives rise to an inference that can reasonably be drawn that the registrant knew of the complainant or its trademark and intended to copy it, thus giving rise to findings of no right or legitimate interest and bad faith registration and use.
Several matters have been suggested as candidates that can meet that requirement. But this panellist is of the view that they are equivocal and speculative, rather than evidence from which inferences can be drawn.
1.The first is the choice of the domain name for a website to invoke the ancient city of Tanis. This panellist does not find that choice overwhelmingly appropriate or probable, but on the other hand it is plausible, which is the real test and the addition of “hq” is simply a modern and popular device to attract attention by implying that it is the centre of activities in a particular field. There is immense and increasing interest in discoveries of the ancient world and it is scarcely surprising that a developer of websites would choose the name of a famous part of it for a website. Panels should also be wary of rejecting other peoples’ choices on what are essentially grounds of taste or style. Moreover, the respondent does not say that he went looking for a domain name that included the word “tanis” but rather that he saw the disputed domain name was for sale and it aroused his interest because of the word “tanis” being included.
2. It is true that the respondent has not done a great deal in 3 years to develop his website, but his 3 years shows no greater delay than the 3 years delay of the complainant and its 23 year delay since the domain name was registered by the Tanishq Corporation.
3. The whole issue of possible Google searches and their results is entirely speculative and surely an unsound basis on which to reach conclusions of probability, especially as there is no obligation of the respondent to undertake such an exercise. This is especially so when there are established means of ascertaining that information if it were needed and another reason why this proceeding should be in an appropriate court.
4.The issue concerning the Previous Cases is a thoroughly inappropriate way of fact finding. There seems to be some underlying concern that the respondent described himself as a “active developer of online businesses”, although in some reported decisions he has said or it has been found that he is a domain name investor. Although this panellist knows nothing about the respondent’s business, there is no contradiction in the two statements. They are complementary roles and there is nothing odd or unusual about this. Like many people and businesses, it can be seen that he buys domain names, thus investing in them; he would give some of them a new life by building an active website around them with relevant content; he would then sell some of them, with the content, thereby actively developing an online business; or he may keep the online business and run it himself; some of the websites he would presumably not sell, because there is no buyer at the time and he would then keep them in his stock until someone came along, possibly another investor or online business developer, who would buy them, thereby furthering his role as an investor. There is nothing wrong or inconsistent in a doctor saying that he or she is a surgeon and also a physician, or even a surgeon and a domain name investor. Both statements are true. In any event it is procedurally and potentially prejudicial to find against a party on such a dubious basis.
The totality of these matters shows that they are not a substitute for evidence and certainly do not justify the adverse inferences against the respondent that are sought to be drawn from them. Accordingly, a finding on this basis that the respondent registered the domain name knowing of the complainant’s trademark cannot be supported. Such a finding would deny the respondent its due process and property rights not to have private property transferred away from it against its will without an evidentiary case being made out to justify that being done.
The inadequacy of the case against the respondent is exacerbated by the time delays of the complainant to which reference has already been made. As has been noted, the complainant has waited not just 3 years but 23 years since the domain name was first registered by its former owner, the Tanishq Corporation, to do anything about claiming it and, on the evidence, it has never made a claim on the domain name before filing the complaint, although it must have known all along about its existence and the use to which it was being put.
According to its Complaint, the complainant’s business is in watches, eyewear, accessories, fragrances and sarees. According to the complainant owner Titan’s website (which is in evidence17 ) the TANISHQ “brand” was launched by it in 1996 and it was therefore already in business under that name in 1998 when the Tanishq Corporation registered the domain name <tanishq.com>, which it did on June 5,1998 for use in its cosmetics business. Accordingly, it should be noted that:
(A) from 1996 until 1998 it is reasonably clear that the domain name was available for anyone to register, which the complainant did not do, but which the respondent’s predecessor did. The owner, who was the respondent’s predecessor in ownership, subsequently made it clear on its website, at least by 2001, that the reason it chose the name Tanishq was that the website was to be used for a “comprehensive cosmetic dotcom !!” to be formed 18. Accordingly, the complainant, with its array of trademarks, websites, and wide commercial activity, must have become aware that there was a business in the wings that was using the brand TANISHQ, that it was used or was to be used for “a comprehensive cosmetic dotcom” which covered at least part of the complainant’s own field. The reason for the name was that in the Urdu language “Tanishq is synonymous to ‘love for your body’, where Tan signifies the body and ishq, love” and similar blandishments. Thus, it seems that for two years, 1996-1998, the complainant could have registered the domain name but did not; and only a short time later, it must have known that it had a cosmetics rival on the horizon that was using the domain name <tanishq.com>.
(B) The Tanishq Corporation, the original registrant of the disputed domain name, registered it on June 5, 1998. A few months after that, the complainant filed for two US trademarks for TANISHQ, on November 25, 1998, they being numbers 232, 3656 and 232,3656. In other words, the first time when the complainant indicated its interest in the TANISHQ name in the jurisdiction of the respondent was after it was already registered in a domain name.
(C) The Tanishq Corporation, the original registrant of the disputed domain name, having registered it on June 5, 1998, the Complainant did not register a domain name that included “tanishq” until, it seems, its first “tanishq” domain name, <tanishq.co.in>, on July 31, 2003. It followed with <tanishq.in>, but not until February 16, 2005 followed by others in the 2000s. The word “tanishq” was therefore in use in a domain name, from June 5, 1998, well before the Complainant took it up in a domain name from 2003.
(D) The Tanishq Corporation, assuming it is the same company, commenced business in 1992 before the present complainant’s parent company took up the name for its business in 1998.
(E) The complainant was also on notice that the use of the word “tanishq” in what became the disputed domain name was disclaimed as having any connection with the complainant. This was done by including on the website of <tanishq.com> for several years19 the following disclaimer:
“© 2001 Tanishq Corporation. All Rights Reserved.
Disclaimer: The domain name ‘tanishq.com’ and all the content, information, goods and services offered on this site are provided by Tanishq Corporation, which is an independent entity having no relationship, association, or connection in any manner whatsoever with Titan Industries Limited, India, who claim ownership in the trademark ‘tanishq’. The content, information, goods and services offered on this site neither origin with, nor are they sponsored by Titan Industries Limited, India or any of its group, associated or affiliated companies, whatsoever. “
Conclusion
The complainant’s material has been presented in this case in such a confusing manner, which the majority of the panel has noted, including not giving dates or understandable information on the Indian trademarks that must have been available to the complainant or its solicitors, that it is difficult to be definitive about many of the significant issues that have arisen. That is another reason why this claim should be heard in a court. The UDRP is for clear cut cases where the trademark is clearly being abused. The present case is far from being such a case.
Moreover, all of the foregoing matters that this panellist has been able to raise show that the respondent probably had every right to register the domain name. It also shows that his explanation for the website devoted to Tanis should not be rejected when it is the complainant itself who seems to have copied the use of the word in a domain name. To this panellist’s mind, it also can scarcely be said that the respondent was acting in bad faith when he has done little more than the complainant itself has done in adopting a word that had been in use in a domain name since 1998.
For those reasons, this panellist would find that the respondent has shown that it has a right or legitimate interest in the disputed domain name and that it did not register and use the disputed domain name in bad faith.
The Hon Neil Brown Q.C.
Minority Panelist (Dissenting)
Date: September 10, 2021
1 The precise number is unclear to the Panel as differing figures are given at various places in the Complaint, but it does not matter.
2 The Complaint lists a number of other domain names which the Complainant says are linked to websites it operates. With the exception of <tanishq.ae> the Panel has not been able to satisfy itself that this is factually correct – for example tanishq.us does not seem to resolve to an active website – and the Panel discounts this evidence. See the dissenting opinion of Neil Brown QC for more details on this issue.
3 The evidence on this is unclear, it appears to have been a transient event, and the Panel attaches no significance to it.
4 In the present case Presiding Panelist Nick Gardner was minded to issue a Procedural Order inviting the Respondent to comment upon the Previous Cases. However panelists Harini Narayanswamy and The Hon Neil Brown Q.C considered that such an order was unnecessary and/or inappropriate. Panelist Harini Narayanswamy considered the Previous Cases a matter of public record that spoke for themselves whilst Panelist Neil Brown QC considered the Previous Cases to be irrelevant. Accordingly no Procedural Order was issued.
5 Email from Complainant to the Respondent, February 22, 2021