The Case of Ekart.com and UDRP Disputes by Indian Companies

The Case of Ekart.com and UDRP Disputes by Indian Companies
by Ankur Raheja MCA FCS LLB, a UDRP / Domain Lawyer, Trademark Expert, Domain Dispute Panelist

Is Reliance Industries the owner of the domain name Reliance.com?

The answer is simply “No” and there are additional examples.

Domain names are registered on a first-come, first-served basis. In domain dispute proceedings, the panel must determine whether the term is a unique, coined phrase associated exclusively with the complainant or if it is a name that could be chosen independently, without knowledge of or reference to the trademark holder. This is well established under UDRP, also evidenced by the UDRP decision pronounced recently in <zoracompanies .com>: (see here). Nevertheless, Indian companies continue to pursue valuable domain names through the UDRP/domain dispute process. While they may have had more success in the INDRP process (which has some unfavorable precedents), they cannot take control of a valuable domain name in a UDRP proceeding simply because it matches their registered trademark, particularly when cases are overseen by experienced Panelists. A recent example is the UDRP case concerning <ekart .com>, brought by Indian e-commerce giant Flipkart, as reported in ICA newsletter vol. 4.45. Previous examples of UDRP filed by Indian Giants include Zydus .com, Jodii .com, Machani .com, SHIL .com, Woodland .com, Croma .com, and many more.

In this particular matter of <ekart .com>, the complainant began operations in 2009 under the name Flipkart and currently provides courier services such as Ekart and Ekart Logistics. It has held trademark registrations for the word mark E-KART since November 7, 2012, in various international classes. While the disputed domain name <ekart .com> was registered on December 29, 1999, and redirected to a website offering domain names for sale, including <ekart .com>, the complainant alleged that “the use of the disputed domain name to redirect to a website offering other domain names for sale does not amount to the legitimate use of the disputed domain name, since it unfairly targets the goodwill attached to the complainant’s trademarks.” The panel held it to be a clear case of attempted Reverse Domain Name Hijacking (RDNH): “the complainant is represented by counsel, who must be taken to have been aware that the complaint could not succeed in circumstances where the disputed domain name was registered some ten years before the complainant’s first use of any corresponding trademark.”

The <ekart .com> comment in Internet Commerce Association  (ICA) newsletter vol 4.45 also includes mention of the UDRP matter concerning domain names <shil .com and <hsil .com>: “An intriguing case that arose in 2020 involved an Indian company disputing the valuable four-letter domain names SHIL(.com) and HSIL(.com) (see decision here). Following the SHIL/HSIL(.com) decision, the registrant of the domain names created a website to provide comprehensive information about RDNH decisions made against Indian companies in domain name disputes titled Indian Companies Found to be Reverse Domain Name Hijackers, which can be found here.” In certain instances mentioned on <shil .com>, there were cases where the domain names were listed for sale. Specifically, the domain names <shil .com> and <hsil .com> were each available for US $26,000. However, this fact is not particularly significant. Consequently, the Panelist in this matter appropriately disregarded the offering of <ekart .com> for sale. Ironically, in INDRP proceedings involving .IN domain names, this scenario is mostly misinterpreted as a case of ‘bad faith’ without a thorough analysis of the relevant factors and WIPO Overview.

Notably, the domain name <jio .com> was acquired by Reliance Group in 2012 from its previous registrant. Without this acquisition, they would not have been able to assert rights to it under UDRP, which is the most suitable approach (as opposed to <JioHoststar .com>, which is clearly a cybersquatting matter). The Panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP, see WIPO Overview 3.0, section 2.1 and UDRP and UDRP perspectives, section 3.5. In a rare case, Kalyan Jewellers opted to take legal action against the domain registrant instead of acquiring the domain name after losing their UDRP case for <kalyanjewellers .com>, months before their IPO was set to launch. However, even after four years following the UDRP decision, they still do not possess the .com domain name but continue to have an official presence at: kalyanjewellers(.net).