Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp
Case No. D2019-2642
December 18, 2019
It is not as rare as one may imagine for undefended Complaints to lose. In fact, there are certain circumstances in which a case is almost always doomed to fail. These cases are likely candidates for a finding of Reverse Domain Name Hijacking (RDNH) against the Complainant. One such case is worth exploring in some greater depth.
In Nalli Chinnasami Chetty v. Anthony Nalli, FourPoints Multimedia Corp, the Complainant argued that the respondent registered and use the disputed domain <nalligroup.com> for the sole purpose of misappropriating the reputation of its NALLI trademark. Superficially, this seems like a valid claim, and without any response, it would have required minimal evidence to succeed. However, the Complaint had a glaring omission; it failed to address that the Respondent’s last name was Nalli, identical to the Complainant’s trademark, which the Complainant must have discovered when the Registrar verified that the domain name holder was the Respondent. Thus, the Respondent could have a had a legitimate reason for registering a domain name based on his own name.
It is reassuring to find that under the UDRP, one still has the right to their own name. The second element of the policy clearly states that a Respondent has a right or legitimate interest (RLI) in a domain name if:
[the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights.
In a prior, similar Complaint, Modefine S.A. v. A.R. Mani, the Panel noted that “[i]t is very common practice for people and organisations to register domain names which are based upon initials and a name, acronyms or otherwise variants of their full names.” In that case, a fortunately named Canadian, A. R. Mani, frustrated the Italian designer, Georgio Armani, as he had registered the domain name <armani.com>, because it was his name. Armani subsequently lost the Complaint, despite their trademark rights, and was forced to buy the domain name, likely for a very large sum. This case established that despite a Complainant’s potential trademark rights, one has the right to a domain name which incorporates their own name. However, is not uncommon for people to register domains under false identities. Therefore, it was not a fait accompli that Anthony Nalli did in fact exist and was the Respondent in this case, and the Complainant could have potentially argued against it.
Unfortunately for some trademark holders, we still have the right to use our own names on the internet!
Despite the Complainant’s failure to address this, in accordance with the UDRP, the panel used their discretion to conduct some research into the issue. The Panel found that Anthony Nalli did in fact exist, turning out to be a Canadian television producer with his own Wikipedia page, and was contactable at the details provided to the Registrar. Without anything present in the Complaint to address this, the Panel inferred that the Respondent had registered the domain because it was his name, and therefore held a RLI in the disputed domain. The Complaint therefore failed under the second element of the policy and was denied.
The claim serves as an important reminder not only that panels are able to, and do, undertake limited research into matters on the public record, but of the fact that in the world of domain names, one still has the right to use their own name.
Reverse Domain Name Hijacking
While the case was done and dusted, the Panel still had one thing left to consider: Reverse Domain Name Hijacking (RDNH). When found against the Complainant, RDNH is essentially a censure, occuring when the Panel believes there to be an abuse of the UDRP proceeding. While a finding of RDNH is often requested by a Respondent, a Panel can find RDNH sua sponte when it believes the claim to be vexatious an brought in bad faith.
When the Complaint was initially filed, the Respondent’s contact information was protected by the WHOIS privacy guard, and as such, the name of the Respondent was initially hidden. Therefore, at least at the beginning of the proceedings, the Complainant could not have possibly known the Respondent was commonly known by the domain. However, when the privacy guard was lifted, and the Respondent’s identity was made known to the Complainant, it failed to update or withdraw its claim, but persisted with it although it must have known that its allegations were false.
In the eyes of the Panel, the Complainant therefore should have known it had no chance of success, and its decision to continue with the claim was found to be an abuse of the administrative process. While findings of RNDH have little practical consequence, they are especially embarrassing for Complainants and their counsel. But by that means, they may limit the number of vexatious UDRP claims that are brought.
The Use of the Evidence in Nalli’s Case
Without taking a firm view one way or the other (as our intention is to stimulate discussion, not to advocate for a particular position) some comment should be made on the evidence in this case and how it was dealt with.
There is no doubt that a UDRP panellist has a discretion to decide whether to look at material that is on a public record. Both parties have access to the same material and there is no reason why a panellist should not have access to the same material.
That right comes from the power and responsibility of an arbitrator to conduct the proceedings in the way that he or she decides, subject to the rules of natural justice. (See the UDRP Rules 10 (a) and (b)).
We put that proposition in the way that we have, because we think there is a question whether the panel was correct in saying that panellists are ”permitted” by the WIPO Overview to look at public sources. Can the WIPO Overview give any such permission or, for that matter, withhold it ? What do you think?
While you have your thinking caps on, there is a related question: where does that power to give “permission” come from?
There are some other questions that arise.
First, was the panellist correct in using the expression “public sources”, or should this right of private research go only as far as official or public records , i.e. records of official acts having taken place, like the issue of a licence or the recording of a conviction or a declaration of bankruptcy?
In particular, should a panellist normally feel free to draw on Wikipedia or IMDB, two examples given of “public sources”? Is there not a danger that Wikipedia or IMDB is not accurate and that comments made in those publications about a party in the UDRP proceeding may be wrong. It might also be changed or corrected after the UDRP decision has been issued? In other words is there not a danger in drawing on information published in Wikipedia or IMDB that may turn out to be wrong?
Another question arises when we consider that in the “usual” UDRP case a panellist would state the facts that he or she has gleaned from the public record and then move on. But if the factual matter were important enough, or perhaps controversial, the panellist might advise the parties of the private research that had been made and whether the parties had anything to say about it before the decision was finalised. Some would say that this is an important aspect of the rules of natural justice.
Finally, the way that the Panel in Nalli’s case used the new material it discovered went further, did it not, than the way in which new information has been used in previous decisions? There is nothing wrong in this, but as it might be a new use of evidence, it should be noted. The Panel found that Nulli was the name of the Respondent, but then went on to do a bit of private research on who this Nulli was. From there, the Panel then immediately concluded that what was discovered about him “plainly” gave Nulli rights in the domain name and “plausible” arguments which negated the arguments of the Complainant on RLI. Thus, Nulli’s situation might well be the same as that of the famous Mr Mani in the Armani Case, in that he registered and planned to use the domain name for a website based on his name. The Respondent had not argued any of this as he did not defend the claim.
But even so, should he have been told that this evidence had been unearthed and that the Panel was considering whether to act on it and use it in its decision? Would it not be wise for a panel to do this, to ensure that it was complying with the rules of natural justice? In other words, is the way in which the Panel used the evidence it uncovered in its private research going too far in reaching conclusions about the Respondent and then deciding the case on those conclusions, when neither party had made submissions on them? Should the same notice have been given to the Complainant, together with an opportunity to reply to it before the panel made its adverse finding against the Complainant? We leave that to you to think about.