No love lost between Indian matrimony websites

A recent WIPO decision has highlighted some of the key issues to consider before bringing a UDRP complaint. In this case, not only was the Complainant unsuccessful in the complaint, but they were also accused of reverse domain name hijacking after the panellist held that their case was brought in bad faith and constitutes an abuse of the administrative proceeding. The decision can be found here - https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-3976.pdf.

The facts were these - The Complainant, an Indian matrimony website, claimed rights in the mark JODISEARCH.COM and was relying on these to bring a domain name complaint against the Respondent, their competitor Matrimony.com, in relation to their domain jodii.com. However, “Jodi” is a recognised Hindu term meaning “a pair or couple” and the term is used by many matchmaking sites, and it is in part this latter point that led to the Complainant's downfall here. 

The panellist held that ultimately the Complainant must have known or should have known that their rights in JODISEARCH.COM did not give them sufficient rights in the generic term “JODI” for there to be similarity with the Respondent's domain. They also held that the Complainant was already aware through prior correspondence that the Respondent had rights or legitimate interest in the domain and they should have known that the Respondent was not acting in bad faith because the domain was actually registered in 2010, four years before the Complainant could show rights in jodisearch.com. 

Andrew Allemann, in his assessment of the decision on domainnamewire.com, raises an interesting point which was not raised in the complaint at all. Although the disputed domain was registered in 2010, the Respondent appears to have only acquired the domain name in 2021. However, since the Complainant did not raise this as an argument in the Complaint and instead actually tried to hide the fact that the disputed domain was registered earlier by omitting the specific date from their Complaint, the panellist held that this was further evidence that the complaint was brought in bad faith and contributed to the finding of reverse domain hijacking. 

There are a number of takeaways from this decision, but I believe the key points are:

• Do not expect the panellist to conduct additional checks on registration and acquisition dates, so always check these.
• If your rights are in a generic term, especially one that is combined with additional words, it is going to be tricky to show that you have sufficient standing and that there is similarity with a mark that consists of only the generic term (with or without variations). 
• Remember that panellists generally hold represented Complainants to a higher standard so as a representative make sure you are realistic with your client about prospects of success. If the undisputable facts mean the case falls down on one or more of the three required elements, the complaint will not succeed. Remember, UDRP complaints are decided on a much more black and white basis than trade mark disputes.