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October 14, 2020

Lack Of Use Indicates Lack Of Legitimate Interest In Domain Name

Author: Aditi Roy Chowdhury

In the matter of Sazerac Brands, LLC v. Dean Chandler [INDRP/1243], the Arbitral Tribunal under the Indian Domain Name Dispute Resolution Policy (INDRP), vide order dated September 23, 2020, transferred the disputed domain name <fireball.in> to the Complainant.

The Complainant claimed to be using the mark FIREBALL for selling whisky internationally since 1977 and in India since 2013. The complainant claimed to be the owner of various domain names such as <fireballwhisky.com>, <fireballwhiskey.in>, <fireball.red>, etc. and trademark registrations across jurisdictions, including in India (since July 19, 2013). Aggrieved by the Registrant obtaining the domain name <fireball.in>, the Complainant initiated the instant INDRP proceeding. The complainant submitted inter alia that the impugned domain name is identical to their mark FIREBALL and is a parked page which has never been used by the Registrant. The Complainant relied on Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna [WIPO Case No. D2000-0869], to submit the fact that users once so diverted or attracted, are confronted with an inactive page does not cure the initial and illegitimate diversion.

The Registrant claimed to have registered <fireball.in> to establish an alumni network for the McMaster Faculty of Engineering, which he claimed was referred to as the ‘Fireball Family’ since at least 1995. The Registrant also claimed that FIREBALL is a generic word having a dictionary meaning and hence the Registrant is not barred from adopting the same. The Registrant relied on various cases such as Javier Narvaez Segura, Grupo Loading Systems S.L. v. Domain Admin, Mrs. Jello, LLC [WIPO Case No D2016-1199], to substantiate that a parked page generating ‘pay per click’ revenue can be deemed to be a bona fide offering of goods or services if the mark in question is a generic or non-exclusive term.  

The Tribunal observed that <fireball.in> was identical to the Complainant’s mark and that the Registrant had failed to establish legitimate interest in the said domain name. The Tribunal held “Tribunal is of the view that the Respondent has been unable to prove that it has been using the mark ‘FIREBALL’ or the disputed domain name ‘fireball.in’ in connection with a bona fide offering of goods or services. The Complainant has thus proved that the Respondent has no rights or legitimate interests in the disputed domain name”. Accordingly, the Tribunal directed <fireball.in> to be transferred to the Complainant.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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