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 circumstance, in which it is almost impossible to prove the third element of the policy: bad faith, has been covered already by previous Domain Times articles. However, a case has presented a different set of circumstances, equally doomed to fail, and 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.
It may be reassuring to hear 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 organizations 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. Georgio Armani’s company subsequently lost the Complaint, despite its trademark rights, and was forced to buy the domain name, likely for a very large sum. This case established that despite an opposing party’s potential trademark rights, one has the right to a domain name which incorporates their own name. Clearly, it was not looking good for the Complainant in this case.
However, this Complaint was undefended, and it is not uncommon for people to register domains under false identities. Therefore, it was not a fait accompli that Anothony Nalli did in fact exist and was the Respondent in this case, and the Complainant could have potentially argued against it. 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.
This claim serves as an important reminder not only that panels are able to undertake limited research into matters of 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
Reverse Domain Name Hijacking (RDNH). RDNH, when found against the Complainant, is essentially a censure against the Complainant and possibly its counsel, in circumstances which the Panel believes to be an abuse of the UDRP proceeding, brought in bad faith. 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.
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. The panel also noted that the Complaint it-self was submitted on the barest of evidence, and would have been likely to fail regardless, and found RDNH. The Complainant 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 a Complainant’s counsel, and through this, one hopes, seek to limit the number of vexatious UDRP claims.