The WIPO ruling on the case (HSIL Limited, Somany Home Innovation Limited / SHIL Ltd and Brilloca Limited, India represented by Manav Gupta, India v. Get on the Web Limited represented by John Berryhill,USA) can be found at WIPO Case No.: D2020-3416
The Panel concluded that the Complainants’ actions constitute Reverse Domain Name Hijacking for the following reasons:
i) the Complainants, which are represented by counsel, should have appreciated the weakness of its case and the fact that the acronyms “Hsil” and “Shil” encompassed in the disputed domain names could not be exclusively referable to the Complainants, as claimed in the Complaint without any supporting evidence. Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, past panels have held that a represented complainant should be held to a higher standard;
ii) the Complainants knew or should have known that the Respondent was not acting in bad faith, especially considering the disputed domain names were registered long before the Complainants acquired trademark rights for the acronym “hsil” and the asserted common law rights for the acronym “shil”;
iii) the Complainants should have carried out a minimal due diligence that would have disclosed the fact that the Complainants would not have succeeded in any way under any fair interpretation of the available facts before the filing of the Complaint;
iv) the Complainants have not provided evidence to substantiate the critical elements of their case. See Bigfoot Ventures LLC v. Shaun Driessen, WIPO Case No. D2016-1330; the Complainants also appear to ignore settled Policy precedents on a number of issues as highlighted in the sections 6.2.B and C above.
v) the Complainants have also provided false information about the inability for any third party to register the acronym “Shil” through the Indian Trademark Office “owing to its well-known status and enormous goodwill” since, as demonstrated by the Respondent (Annex A to the Response), third parties managed to secure trademark registrations for signs identical or similar to SHIL in India. Moreover, 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. Moreover, a Court order submitted in such Annex does not pertain to a trademark dispute but to a design dispute.
In sum, the Complainant’s professional representative betrays an alarming unfamiliarity with the UDRP and the two decades of precedent under it, to the point of including the Registrar as a respondent merely for performing its non-discretionary function of registering an available domain name. Such conduct in any court would result in a swift dismissal and appropriate sanctions for wasting the parties' and the court's time. This Panel is limited to a find of abuse, which it readily imposes.
Decision
For the foregoing reasons, the Complaint is denied. The Panel also finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding.
Luca Barbero
Presiding Panelist
Shwetasree Majumder
Panelist
Richard G. Lyon
Panelist
Date: April 4, 2021 |