Somany Home Innovation Limited are found to be Reverse Domain Name Hijackers.
They thought they could wrest the domain SHIL.com name from its legitimate owners for the mere price of a UDRP filing fee.
The WIPO ruling on the case (HSIL Limited, Somany Home Innovation Limited / SHIL Ltd and Brilloca Limited, India v. Get on the Web Limited) can be found at WIPO Case No.: D2020-3416
The panelists' Decision summed up by saying:
The Complainant had taken almost a year to prepare the case. Filed with WIPO in December 2020, the complaint contained WHOIS screenshots, Google searches, website screenshots dating as far back as January 2020. It seems somewhat unfair that a Complainant has almost an eternity to prepare a UDRP case, but a Respondent has a mere 20 days (with an optional 4 day extension) to prepare and file a response.
Outrageously, in their complaint Somany Home Innovation Limited made the allegation that Get On The Web Limited (GOTW) had registered the domain name SHIL.com “dishonestly and illegally” and further proceeded to make other false claims in its complaint and at the same time disregarding the rules of the UDRP. Dishonestly and illegally? GOTW registered the domain name totally honestly and legally. No wonder they got landed with a Reverse Domain Name Hijacking decision!
Neither the Complainant nor their legal counsel Manav Gupta had ever made any contact whatsoever with GOTW, but instead they plunged straight into launching this UDRP complaint. This was despite a very clear disclaimer on the website of the then SHIL.com domain inviting any persons with trademark rights to make contact.
Unanimously all of the three panelists agreed that the SHIL.com domain name had neither been registered in bad faith nor was the SHIL.com domain name being used in bad faith and denied the complaint, and furthermore delivered a Reverse Domain Name Hijacking verdict.
Get on the Web Limited, a long established UK-based company registered the domain name SHIL.com over 20 years ago on the 12th December 1999.
|LESSONS TO BE LEARNT FROM THIS CASE|
1) Do your homework.
You have to wonder why they filed this UDRP as they knew or should have known that it would fail and most likely get them branded as Reverse Domain Name Hijackers. Minimal research (using such tools as UDRPsearch.com would have shown that Get On The Web Limited would not shirk from vigorously defending any UDRP case simply by looking at two other UDRP cases against Get On The Web Limited for domain names QLP.com and TRTL.com. Indeed, there is a webpage on the TRTL.com website specifically listing many UDRP cases where complainants knew or should have known that their case would fail.
Somany Home Innovation Limited and their lawyer Manav Gupta, India should have done their homework and done a little research before filing this UDRP case.
2) Don't make False Claims.
The false claims made by Somany Home Innovation Limited included:
To enhance their case for entitlement, they slipped into their complaint “SHIL Ltd” – no such company exists! Indeed, there are numerous other companies in India incorporating the word SHIL in their company name – none of which is the Complainant!
They made the claim that:
Of course this too was blatantly false. There are ten registered trademarks in India consisting or comprising of the textual component “SHIL”, none of which belong to the Complainant.
The panel stated:
They also stated that they obtained favorable decisions from the New Delhi High Court in trademark infringement cases, to which the panel replied:
“.. the Complainants, through its counsel, attempted to give the impression that the Delhi High Court has upheld the Complainants’ rights in HSIL and SHIL but the supporting documents filed as Annexes P-10 to the Complaint do not pertain to the trademarks HSIL and SHIL but to the Complainants’ trademark HINDWARE.”The Complainants point out that the Somany Home Innovation Limited uses
“the registered Trademark and the surname/family name of the Founder/Promoter and Directors of the Complainants, in its corporate names” and that “in the public perception, the mere mention of the name/marks HSIL/SOMANY/SHIL relates the members of the trade as well as customers solely to the Complainants. Even a cursory Google search is sufficient to demonstrate that the name/ mark 'HSIL/ SOMANY/ SHIL' is associated solely with the Complainants, and as such the Respondents had to also be aware of the same.”.In the public perception, the mere mention of the name SHIL relates solely to the Complainant? Baloney! Codswallop! Most people worldwide will have never heard of SHIL Indian household products. Besides, there are other companies incorporating "SHIL" in their company names. Furthermore, SHIL is a much used first name as well as second name as a quick search for "SHIL" on Facebook or Google will reveal.
Exclusively relates to the Complainant? The panel stated:
The Complainant Somany Home Innovation Limited claimed that GOTW should have been aware of the Complainant’s usage of its mark which they claimed had been in commerce for a long period of time before GOTW’s registration of the domain name SHIL.com.
This is clearly false as the domain name SHIL.com was registered in 1999 and Somany Home Innovation Limited was only incorporated in 2017 and had no registered trademark for “SHIL”. As the panelists pointed out the complainant gave no supporting evidence of any asserted common law rights for the acronym “SHIL”. Accordingly, GOTW could not have been aware, as the Complainant stated, of the Complainant’s asserted usage of “SHIL”.
3) Don’t cheat and stick to the rules.
4) Don't try and bamboozle the panel by misquoting the UDRP policy - you will be found out.
The Complainant stated:
when in fact the UDRP Section 4(b)(i) policy states:
Leaving out the key qualifiers, the Complainant essentially claims that it is bad faith to publicly offer a domain name for sale, instead of what the Policy actually states.
In summing up, the panel gave 5 reasons why, to not only to deny the complaint, but also to deliver a Reverse Domain Name Hijacking verdict.
Finally, the panel wrote a swingeing rebuke about the Complainants’ legal counsel Manav Gupta, India.
What is Reverse Domain Name Hijacking (RDNH)?
Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".
Before contemplating filing a UDRP case, Complainants should read the CircleID.com article “The Hidden Perils of Filing a Baseless UDRP Complaint”.
Why did Somany Home Innovation Limited file this folly of a UDRP case which could never have succeeded?
For a UDRP complaint to succeed, the UDRP rules require both that:
"the domain name has been registered AND the domain name is being used in bad faith".The domain name SHIL.com was registered many years before Somany Home Innovation Limited even existed (17 years to be precise) and they had no registered trademark.
As the panelists stated :.
Somany Home Innovation Limited and their lawyer Manav Gupta should have known this prior to launching this folly of a UDRP case.
Why file an unwinnable UDRP case?
A suggestion to why this happens is succinctly summed up in the article relating to the UDRP case over the 4-letter domain name YISH.com.
1. Do not file frivolous UDRP complaints.
2. Research your case before filing.
|Somany Home Innovation Limited represented by advocate Manav Gupta are not alone, there are other Indian Companies found to be Reverse Domain Name Hijackers.|