RAFFLES International Limited claimed to be one of the largest luxury management companies in the world, with over 104 hotels worldwide (at locations like Saudi Arabia, Singapore, China, Dubai, Philippines, Paris, etc.) in operation under the RAFFLES, Fairmont and Swissotel trademarks. It had first hotel established in 1887.
In 2015, Raffles International Limited, Singapore brought an action of Domain name dispute under INDRP against the Domain name – TheRaffles.co.in, which was owned by Hotel The Raffles Kota with a legitimate website upon the Domain Name. In addition to the domain name, THE RAFFLES was their hotel brand name at Kota, Rajasthan, that was inaugurated in Dec 2012 by a State Minister.
Unfortunately, the Domain Name was ordered to be transferred (read the decision here), though Raffles International neither had any physical presence in India, nor even promoted their mark in Indian Jurisdiction, but the only reason for transfer of the Domain Name <theraffles.co.in>, was their having applied for Trademark in India before the Domain Name was registered, that is Trademark Application was pending.
Thereafter, in 2016 (post INDRP decision), the Indian Hotel “The Raffles” changed its name to Hotel Rallentino, which is something noticed for the very first time in the history of INDRP.
Now important factors that were neglected and/or resulted into such a decision can be summed up as follows:
1. Trademark Registration – Now it is pertinent to mention if just a Trademark Application before a Trademark registry enough to help the first condition as to identical or similarly of the domain name with the Trademark. The answer is NO, only registered Trademark needs to be considered. The same holds good for ICANN’s Trademark Clearing House created for new gTLDs.
Moreover, when Indian Trademark Registry database evidences the fact that Complainant’s applications made in year 2006 and 2011 under class 42 and 44 respectively for the mark RAFFLES were already opposed as some other Indian Company claimed right to the mark Raffles, who already have registered Trademark under class 33 in three different forms, claimed prior rights in India. The said opposition was filed a decade ago in 2008 and till date, Complainant’s RAFFLES trademark hasn’t been registered in India.
2. Constructive Notice – Time and again it has been held that the Complainant in such matters should have provided some proof as to extensive prior use or any kind of promotion carried on in India, which could have been taken as constructive notice to the Respondent as to popularity of Complainant’s mark, but again the same was lacking in the said matter.
In the matter of American Funds Distributors, Inc. v. Domain Administration Limited [Case No. D2007-0950], it was held that if the original registrant did not have actual knowledge of the Complainant’s AMERICAN FUNDS trademark, then the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights in AMERICAN FUNDS. By the time the Respondent acquired the domain name in issue, the Complainant’s trademark rights in AMERICAN FUNDS were still more established. But the same didn’t hold good in the said matter of ‘The Raffles’.
3. Due Diligence – Though, Complainant adopted a generic word but still if the Respondent could have done some due diligence by looking for similar marks in Trademark Registry database or at least done some Google Search, that could have saved him from unnecessary legal proceedings and efforts they have to make in re-branding. This holds true in terms of Rule 3(b) of the .IN Domain Dispute Resolution Policy, which provides that by applying to register a domain name, or by asking a Registrar to maintain or renew a domain name registration, the Registrant represents and warrants that to the Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.
But now the Hotel management seems to have made a perfect decision in selecting an unique / inventive name, whose .COM was also available and now official website of the hotel is at: www.rallentino.com.
That is, only because some one has strong Trademark rights, it cannot be a ground for transfer of the Domain Name, while legitimate interests exist. The complainant should have more appropriately moved to the Civil Court and filed for injunction.