13 Jul 2021

Machani Infra Development Corporation Private Limited v. K, Anand

FACTS OF THE CASE:

Machani Infra Development Corporation Private Limited, the complainant, is a member of the Machani Group of India which includes several businesses in the fields of manufacturing, real estate, and infrastructure, agriculture, education, etc. He is the owner of the domain name “machanigroup.com” registered on December 8, 2010.

The respondent is Anand Krishna Machani who is originally from Andhra Pradesh, India, but has been residing in the United States since March 1997. The disputed domain name was registered by him on June 25, 1999.

On May 3, 2021, the complainant filed a complaint with the WIPO Arbitration and Mediation Center regarding the disputed domain name “machani.com”. The proceedings started on May 6, 2021, after the Center notified the Respondent, K, Anand, United States of America, about the complaint.

COMPLAINANT’S CONTENTIONS:

The Complainant claims to have unregistered trademark rights in the trademark MACHANI and submits that since the Machani Group’s inception in 1940, the house mark and brand identity MACHANI has been continuously and extensively used and promoted to represent its diverse business offerings. The name “MACHANI” has also been used by nine of the Group’s businesses and ventures, including the Complainant, as their trading name in the past several years.

He further states that it approached the Respondent in 2019-2020 and offered to pay him USD 10,000 in an attempt to purchase the disputed domain name, but the Respondent refused the offer. Further, he claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not known by or associated with the name MACHANI, and must have been aware of the Machani Group/Complainant’s trade name and mark when it registered the disputed domain name in 1999. Lastly, the complainant contends that the disputed domain name was registered and is being used in bad faith.

RESPONDENT’S CONTENTIONS:

The Respondent submits that the Complainant does not hold any registered trademark in the sign MACHANI and has not acquired any rights in it, so the Complainant has no standing in this proceeding. The complainant’s domain name was registered in December 2010 while the disputed domain name was registered in June 1999. He further submits that the Complainant does not have any common law rights in a trademark based upon the fact that its founder had “Machani” as his first name.

The Respondent contends that he has rights and legitimate interest in the disputed domain name as he is commonly known by the disputed domain since his birth and therefore applied for its registration. He also states that he has regularly used his email account associated with the disputed domain name since 2000. Respondent also denies receiving an offer from the complainant for buying the domain name.

He further stated that the complaint has been filed with the bad faith intention to hijack the disputed domain name and harass the Respondent, by making misleading and unsupported claims of having exclusive rights in the name “Machani” and not disclosing the fact that it is a common last name.

COURT FINDINGS:

According to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Respondent has registered and is using the disputed domain name in bad faith. However, based on the Respondent’s contentions, the complainant fails to establish each of these points.

The panel also found Reverse Domain Name Hijacking based on the facts that the complainant knew it could not succeed as to any of the required three elements such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith.

The complaint was denied and it was declared by the panel that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.