Bert the Spider, DBA IP Illustration v. Nilanshu Shekhar / KAnalysis Consultants (P) Limited
Claim Number: FA2307002054361
Complainant is Bert the Spider, DBA IP Illustration (“Complainant”), represented by David Hassan, Texas, USA. Respondent is Nilanshu Shekhar / KAnalysis Consultants (P) Limited (“Respondent”), represented by Nilanshu Shekhar, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ipr-illustration.com>, registered with Launchpad.com Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to Forum electronically on July 24, 2023; Forum received payment on July 24, 2023.
On July 24, 2023, Launchpad.com Inc. confirmed by e-mail to Forum that the <ipr-illustration.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ipr-illustration.com. Also on July 31, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 21, 2023.
On August 21, 2023, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Héctor Ariel Manoff as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainants owns IP ILLUSTRATION trademark, Registration Number 4982170.
IPR Illustration is a direct competitor to IP Illustration.
Respondent is contacting their customers in an effort to capitalize on its good reputation and mistaking IPR Illustration for IP Illustration.
Complainant holds the domain name ipillustration.com since 2004.
IP Illustration operates under the names IP Illustration, IPI, and Intellectual Property Illustration.
Intellectual Proprty Illustration appears at the top of the web browser window for <ipr-illustration.com>.
Respondent is using ipr-illustration.com because they can no longer use <ip-illustration.com> per a prior agreement.
Respondent seeks to cause confusion and profit from Complainant’s positive reputation.
Clients have been misled.
B. Respondent
Respondent owns website <www.ipr-illustration.com> as from June, 2016.
It is used for advertising patent services.
Clients are very educated and will not be led into confusion since the mark is a combination of 2 commonly used and generic terms “IP” and “ILLUSTRATION”.
Trademark rights on IP ILLUSTRATION cannot be claimed because of the generic terms which refers to the class of products or services it identifies.
Respondent’s domain name contains a “hyphen (-)” which separates 2 commonly used terms “IPR” and “ILLUSTRATION” along with an additional letter R, which is sufficient to avoid a likelihood of confusion with the Complainant’s domain.
Respondents have been into the service of providing patent illustration, drafting and other IP services since 2007.
IPR Illustration provides bona fide services since 2010.
Respondent has been using <ipr-illustration.com> domain name openly, exclusively, uninterruptedly and at very extensive level.
There are various similar domain name using the commonly used terms such as “IP” and “ILLUSTRATION” and providing similar services.
Respondent is making a legitimate fair use of the domain name, without any mala-fide intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent registered its domain <ip-illustration.com> in 2015 and later registered a new one (<ipr-illustration.com>) when Complainant communicated its reservations on the first domain name.
Respondent clearly mentions all the contact details and details about its US company “KA Filing LLC” to avoid likelihood of confusion.
Complainant is in the field of patent/trademark illustration and owns IP ILLUSTRATION trademark, Registration Number 4982170, filed in 2015 and granted in 2016.
Respondent owns the website at <ipr-illustration.com> as from June, 2016, which is used for advertising patent services but starts its activities as Intellectual Property law firm (a full-service patent illustration and drafting company) in 2007. In addition, in 2015 Respondent had registered the domain name <ip-illustration.com>.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the IP ILLUSTRATION trademark, Registration Number 4982170. See, Complaint Exhibit Annex 3.
The disputed domain name Respondent’s <ipr-illustration.com> includes Complainant’s marks plus a letter R and appends the “.com” gTLD at the end.
Respondent argues that the Complainant’s mark includes two words that are generic terms which refer to the class of products or services it identifies and that the domain name does not copy or mimic them exactly but contains an additional letter R so the domain name should not be considered confusingly similar to Complainant’s marks.
Despite the generic terms, the Panel finds that the Domain Name is not identical but confusingly similar to the IP ILLUSTRATION marks, in which Complainant has rights, under Policy ¶ 4(a)(i). See Boston Properties Limited Partnership v. CLAUDETTE MOUSSA, FA 1610502 (Forum May 11, 2015) (“The Respondent contends that <bostonpropertiesadvisors.com> is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s trademark. However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether the Complainant has rights in the trademark and whether the disputed domain name is identical or confusingly similar to Complainant’s trademark.… Accordingly, the Panel finds that the <bostonpropertiesadvisors.com> domain name is confusingly similar to the BOSTON PROPERTIES trademark pursuant to Policy ¶ 4(a)(i), despite the addition of the generic term “advisors.”).
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
The Panels finds that Complainant did not make a prima facie case that Respondent lacks rights or legitimate interests in the domain name under Policy.
On the contrary, Respondent argued to have been into the service of providing patent illustration, drafting and other IP services since 2007 and providing bona fide services to patent law firms, companies, and individual inventors since 2010. See Boston Properties Limited Partnership v. CLAUDETTE MOUSSA, FA 1610502 (Forum May 11, 2015) (“Where a respondent uses a domain name to reflect the goods or services it offers under that domain name, panels have granted rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii).”). See Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name). Thus, the Panel concludes that the Respondent is at least making a fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (Policy ¶ 4(c)(iii)).
Moreover, Respondents proved to have registered the domain <www.ip-illustration.com> in 2015 (which was identical to Complainant´s trademark), before Complaint’s trademark registration. Thus this Panel does not find clearly evidence that the cited domain name and the disputed one (<ipr-illustration.com>) had been registered in reference to Complainant’s trademark. It seems even possible that the coincidence had been due to the generic terms: IP (Intellectual Property) and Illustration.
This Panel agrees with Respondent that the references to all the contact details and details about its US company “KA Filing LLC” on its website at <www.ipr-illustration.com>, shows good faith and the intention to avoid any confusion or likelihood of confusion.
On the evidence available, the Panel concludes that Complainant has failed to prove that Respondent has intended to trade off the goodwill and reputation of Complainant by registering and using the Domain Name as it has.
For the reasons set forth above, the Panel finds that Respondent has rights and legitimate interests in the Domain Name.
Complainant argues that Respondent seeks to cause confusion and profit from its reputation.
The Panel finds that the correspondence with the clients submitted as evidence is not sufficient to prove bad faith.
Even though the domain name was registered after the Complainant’s trademark was granted, there is no evidence of bad faith. It cannot be proved based on the fact that the trademark is formed by two generic terms which describe the services for which the trademark is used. (See Boston Properties Limited Partnership v. CLAUDETTE MOUSSA, FA 1610502 (Forum May 11, 2015) (“The term ‘Boston Properties Advisors’ – the name of the Respondent’s business as well as the content of the disputed domain name – is fully describing the geographical place and the nature of the service of the Respondent’s activities. The Panel finds that the Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”); see also Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000), see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term).
Moreover, the Respondent´s domain name is not identical and adds a letter R.
The ground cited by Complainant that Respondent would be using <ipr-illustration.com> only because they can no longer use <ip-illustration.com> per a prior agreement has not proved. The cited agreement was not submitted and this fact would be out of the Policy.
The reason why Respondent firstly (and prior to Complainant’s trademark registration) registered <ip-illustration.com> and then decided to register and start using a new one and <ipr-illustration.com> is not relevant for this case. However, the registration date of <ip-illustration.com> before the granting of Complainant’s trademark proves that there was not bad faith by Respondent.
Since the Panel has concluded that Respondent has rights or legitimate interests in the <ipr-illustration.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Thus the Panel concludes that the Complainant failed to prove that the disputed domain name was registered and is being used in bad faith.
Having [not] established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ipr-illustration.com> domain name REMAIN WITH Respondent.
Héctor Ariel Manoff, Panelist
Dated: September 4, 2023
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