Minor International PCL. v. Mujuthaba` Saeed / Maldives Exclusive
Claim Number: FA1902001829428
Complainant is Minor International PCL. (“Complainant”), represented by Ploynapa Julagasigorn, Thailand. Respondent is Mujuthaba` Saeed / Maldives Exclusive (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <niyama-maldives.com>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2019; the Forum received payment on February 11, 2019.
On February 13, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <niyama-maldives.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@niyama-maldives.com. Also on February 21, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Minor Hotel Group Limited, a different legal entity from Complainant. Whilst the Policy does not prohibit the transfer of a domain name to a third party the Panel notes, for the purposes of the discussion which follows, that there is no indication in the Complaint of how Complainant might be related to the requested transferee.
A. Complainant
Complainant asserts trademark rights in NIYAMA MALDIVES and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The single factual finding pertinent to the decision in this case is that a legal entity by the name of O Plus E Holdings Pvt Ltd is the registered owner of Maldives Trademark Reg. No. TM-0098/2013 (“the Registration”)[i], upon which Complaint rests it claim to trademark rights.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii]
Complainant rests its claim to trademark rights on the Registration. The Registration is a national trademark registration but the registered owner is O Plus E Holdings Pvt Ltd. Complainant states that “it is a 50% owner in O Plus E Holdings Pvt Ltd” and that it “asserts trademark rights … based on its ownership interest in this company.”
The Panel notes that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Jurisprudential Overview 3.0”)[iii] asks at paragraph 1.4 “Does a trademark owner’s affiliate or licensee have standing to file a UDRP complaint?” in response to which the majority of UDRP panelists have held that:
“1.4.1 A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.
While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint.
In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.
1.4.2 Where multiple related parties have rights in the relevant mark on which a UDRP complaint is based, a UDRP complaint may be brought by any one party, on behalf of the other interested parties; in such case, the complainant(s) may wish to specify to which of such named interested parties any transfer decision should be directed.”
The Panel has not been presented with any evidence that Complainant has a 50% interest in the legal owner of the Registration, or that they are related parties at all. Nor is there evidence that Complainant is an exclusive licensee of the trademark Registration. Whilst in the absence of a response a panel may accept reasonable assertions and draw reasonable inferences[iv], here the lack of evidence of any connection between Complaint and the owner of the Registration is compounded by the troubling request that, were the Complaint upheld, the domain name should be transferred to a third party.
The Panel therefore finds that Complainant has not shown trademark rights and so has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <niyama-maldives.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: March 21, 2019
[i] Registered November 14, 2013 and in force until June 1, 2023, the Registration is for a stylized trademark prominently featuring a letter “N” in the colour red and in cursive script underneath which appears the word NIYAMA and below, in much smaller font size, the word MALDIVES
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] https://www.wipo.int/amc/en/domains/search/overview3.0/
[iv] See, for example, See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
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