Author: Intern - Aakaanksha Akella
In the matter of Machani Infra Development Corporation Private Limited v. K. Anand, Case No. D2021-1352, the Sole Panelist [Assen Alexiev] of an Administrative Panel at the WIPO Arbitration and Mediation Center in a decision dated June 18, 2021, ruling in favour of the respondent, denied the complaint seeking transfer of the disputed domain name registration on the basis of complainant’s trademark rights in the domain name.
According to the Uniform Domain Name Dispute Resolution Policy (UDRP), demonstration of legitimate interests is an essential element to be proven in an administrative proceeding. Paragraph 4(c) of the Policy states the circumstances in which rights and legitimate interests are demonstrated by the respondent based on evidence, within which one of the said circumstances has been mentioned as follows: “or (ii) you (an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.” The question that arises is whether a mere surname/family name can satisfy the requirement to have been ‘commonly known by’? Or whether use of first name, possibly in conjunction with surname, is necessary to prove the existence of legitimate interest in the domain name? Is the first name a compulsory component of a domain name for it to have been ‘commonly known by’?
In the administrative proceeding, the complainant contended that it has unregistered trademark rights in “MACHANI”, which is their house mark and brand identity and enjoys enormous reputation and goodwill. As per the complainant, the disputed domain name is identical to its trademark and the respondent has no rights or legitimate interests in it. The respondent contended that his rights and legitimate interests in the domain name stem from his surname “Machani”, which is a common surname.
The Panel, in addition to holding on the basis of the evidence that the term over which the unregistered trademark rights was claimed, is a common first or family name and thereby not inherently distinctive, found that the respondent had legitimate interests in the domain name by virtue of the fact that the term “Machani” reflected in the said domain name alluded to his family name.
The Panel, whilst discerning the element of rights and legitimate interests in the decision, interpreted the Paragraph 4(c) (ii) of the UDR Policy such that “A respondent can be found to be commonly known by a domain name under the Policy Paragraph 4(c) (ii) where it reflects his personal name, and the Respondent has submitted evidence that this is so.”
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