Cylaw Solutions successfully defended the client in the matter of Benchmade Knife Co., Inc. v. Harjatinder Singh Bajaj (Benchmade.in INDRP/1071).
The complainant claimed himself the owner of mark “BENCHMADE”, into manufacture and sale of high-quality tools and knives. The use of the brand BENCHMADE can be traced back as early as 1987 when an individual by the name off Les de Asis decided to design a knife more akin to the materials and manufacturing technology of the time.
Benchmade Knifes Co. has made efforts to protect its brand by registration of associated Trademarks in various jurisdictions including India and USA. In India, the Trademarks are registered to vide application no 2366486 and 2366489 dated 19 July 2012. The Complainant uses the “BENCHAMDE” trademark as a part of their company logo to distinguish their products from their competitors.
The Complainant has spent a substantial amount of money, time and effort in promoting, marketing and using the “BENCHMADE” trademark to identify and distinguish its services domestically and internationally. Consequently, the BENCHAMDE trademark has become well-known in the market worldwide and has customers who rely on the brand’s name and quality.
The Complainant registered the Domain Name www.benchMade.com on 30 July 1995 and has been used as an active website since 2005. The said website has a listing of all the products and also allows users to make purchases online. The Complainant has a portfolio of over 50 domain names, many of which feature well know “BENCHMADE” keyword including .net, .org and so on. Complainant also provided more information as to Google search results as to their brand, social media recognition, further awards, and various activities.
Complainant has prior rights as earliest trademark date back to 1995 and even Indian Trademark has registration date as 2012, while the disputed domain name <benchmde.n> in June 2016. Complainant sent a cease and desist notice to the Respondent on in October 2018 but Respondent did not reply. The Respondent by registering the domain name <benchmade.in> hs intentionally attempted to attract Internet users to its website, by creating confusion among users to its website, by creating confusion among users as it incorporates the Complainant’s mark in its entirety without any word edition, even though the Respondent is neither affiliated nor endorsed by the Complainant.
(i) Respondent’s Domain Name is identical to Complainant’s Trademark
(ii) Respondent has no right or legitimate interests in respect of the domain name
(iii) Respondent’s domain name has been registered and used in bad faith
On the other hand, the Respondent, a Chairman and Director of the company, Gitika Overseas Pvt Ltd, which was incorporated on 05 August 2005 as GRS Embroideries Pvt Ltd (name changed later ), though the Respondent joined in 2009 claimed legitimate interests in the domain name.
That the main objective of Respondent’s Company initially included manufacturing of garments, etc and those were specifically amended in February/March 2016, as to the Main Objectives of the Company to include objects related to Furniture making. It is pertinent to note that when the changes to the Memorandum were filed by the Respondent and India’s Startup India movement was in full swing, i.e. on 24 Feb 2016, Respondent registered many domain names related to furniture.
Further in June 2016, the Respondent searched for more generic names related to his business and as a result, registered disputed domain name <benchmade.in> and acquired another domain name <mybabysroom.com> again at Godaddy.com, both on the same date, i.e. on 21 June 2016. That it is clearly evident that the Respondent registered the Disputed Domain Name along with MyBabysRoom.com for the legitimate purpose of using it in his business and because of its generic value in the word and had no knowledge of the Complainant company or its product, while the domain was freely available to register.
The mark BENCHMADE is generic in nature, having defined at Dictionary.com and also various articles define it in comparison to machine-made. That the Complainant’s mark is comprised of generic terms that are not exclusively associated with Complainant’s services, that is, the widespread third-party use and common use of the term “Benchmade” is wholly unrelated to the Complainant, as there are over 100 domain names registered with the said keyword in different domain extensions.
The Respondent registered the Domain Name was registered on 21 June 2016 and it carries default nameservers as NS13.DOMAINCONTROL.COM and NS14.DOMAINCONTROL.COM and Respondent has never set any nameservers. Though the disputed domain name <benchmade.in> has been renewed by the Respondent in the year 2017 and 2018 but the nameservers have never been changed, while the domain name has been parked by the Domain Registrar Godaddy LLC all by itself, as never any nameservers of the Disputed Domain Name <benchmade.in> have been changed by the Respondent. That is, the nameservers for the domain name <benchmade.in> are set as NS13.DOMAINCONTROL.COM and NS14.DOMAINCONTROL.COM by Domain Registrar by default, while Respondent has never ever changed its name servers, as website development plan never materialized.
That around the same time, the Respondent registered many domain names related to ‘furniture’, on 24 Feb 2016:
That the Respondent has already submitted ” Benchmade ” is a common word, in use by numerous businesses. It was adopted by the Respondent purely because of its generic nature and further on the date of registration of the Disputed Domain Name, it had no knowledge as to the Complainant’s mark. As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy. [Gen. Mach. Prods. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Jan. 26, 2000)].
Where the domain is a common word or descriptive phrase, the panel has required that the complainant prove the Respondent actually targeted the Complainant or its trademark. It must be shown that the Respondent registered the domain name, not because of its descriptive and generic use, but rather because it corresponded to a protected trademark. This reflects the intent required in the Policy.
That is, the Domain has been registered by the Respondent due to its generic nature and the value it may provide to the end-users, when used in his furniture business, the same has already been elaborated above. Moreover, the Complainant has provided no information about its reputation/popularity and no evidence of any advertising or marketing spend or sales volumes at the date of registration of the Domain Name by the Respondent, mainly in Indian jurisdiction since it’s first registration in 2014. Mainly because Reputation counts in resolving UDRP claims and its absence undercuts a complainant’s allegation that Respondent acted with knowledge in registering the disputed domain name.
The Respondent reiterates in all the circumstances that it was not targeting the Complainant’s trademark when it registered the disputed domain name and says that Complainant has provided no evidence that it did so. In the matter of Information Tools Limited v. Future Media Architects, Inc., [WIPO Case # D2017-2178; <harmoni.com>] Complainant alleged it had a six-month lead over Respondent in using HARMONI, but provided “no evidence of sales, advertising or general reputation prior to the registration date, such that the Panel can conclude that the Complainant and its HARMONI Mark was so well known that the Respondent must have had the Complainant in mind at the time it registered the Domain name.” This illustrates that allegations of priority must be supported by proof of reputation.
Since there is no evidence that the Respondent had knowledge of the Complainant’s trademark when it purchased the disputed domain name, as a reference to the Complainant’s trademark reputation. Therefore, the Respondent did not target the Complainant at the time of registration. Further evidence provided above, as to the reasons why it registered the Domain Name demonstrates that the Domain Name was not registered in bad faith.
Domain Name was ordered to remain with the Respondent, while a settlement was reached post the INDRP proceedings.
Read later settlement news at more at https://our.in/5000-settlement-post-indrp-upon-strong-response/
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