SHIL.COM  
 

Somany Home Innovation Limited are found to be Reverse Domain Name Hijackers.

They thought they could wrest the domain SHIL.com name from its legitimate owners for the mere price of a UDRP filing fee.

Somany Home Innovation Limited, India, represented by attorney Manav Gupta, India, lost its UDRP case in an attempt to grab the 20+ year old SHIL.com domain name and were found to be guilty of Reverse Domain Name Hijacking.

 
 
 
 

The WIPO ruling on the case (HSIL Limited, Somany Home Innovation Limited / SHIL Ltd and Brilloca Limited, India v. Get on the Web Limited) can be found at WIPO Case No.: D2020-3416

The panelists' Decision summed up by saying:

"For the foregoing reasons, the Complaint is denied. The Panel also finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking and constitutes an abuse of the administrative proceeding.".

 
 
 
 

Background:

The complaint (including 294 pages of annexes) was an incredible 317 pages long and must surely rank as amongst the longest UDRP complaints ever. The field for just naming the Respondents, was stuffed with over 600 words of additional text. Furthermore, the body of the complaint alone was in excess of 5450 words. This is in breach of the UDRP Supplemental rules that the word limit for a complaint shall be a maximum of 5000 words.

The Complainant had taken almost a year to prepare the case.  Filed with WIPO in December 2020, the complaint contained WHOIS screenshots, Google searches, website screenshots dating as far back as January 2020. It seems somewhat unfair that a Complainant has almost an eternity to prepare a UDRP case, but a Respondent has a mere 20 days (with an optional 4 day extension) to prepare and file a response.

Outrageously, in their complaint Somany Home Innovation Limited made the allegation that Get On The Web Limited (GOTW) had registered the domain name SHIL.com “dishonestly and illegally” and further proceeded to make other false claims in its complaint and at the same time disregarding the rules of the UDRP. Dishonestly and illegally?  GOTW registered the domain name totally honestly and legally.  No wonder they got landed with a Reverse Domain Name Hijacking decision!

Neither the Complainant nor their legal counsel Manav Gupta had ever made any contact whatsoever with GOTW, but instead they plunged straight into launching this UDRP complaint.  This was despite a very clear disclaimer on the website of the then SHIL.com domain inviting any persons with trademark rights to make contact. 

Unanimously all of the three panelists agreed that the SHIL.com domain name had neither been registered in bad faith nor was the SHIL.com domain name being used in bad faith and denied the complaint, and furthermore delivered a Reverse Domain Name Hijacking verdict.

The facts:

Get on the Web Limited, a long established UK-based company registered the domain name SHIL.com over 20 years ago on the 12th December 1999.

Somany Home Innovation Limited was only incorporated 28th September 2017 – 17 years AFTER the domain name SHIL.com had been registered.  Their earliest domain name was shil.co.in registered 18th December 2017 (but never used), its shilgroup.com domain name was registered 29th August 2019. Somany Home Innovation Limited also never had a registered trademark.

  
 
 
 
TIMELINE
19th December 1999   Get On The Web Limited (a company incorporated 6th October 1998) registers the domain name SHIL.com  
30th September 2003   SHIL.com is used as a portal for the Sports and Health website Health-Club.net until 30/09/2003 when it was decided to offer the domain name for sale for the first time.  
28th September 2017   Somany Home Innovation Limited was incorporated.  
18th December 2017   Somany Home Innovation Limited registers the domain name shil.co.in.  
19th February 2020   Ignoring the clear disclaimer on the SHIL.com website requesting to be informed of any party claiming registered trademark rights, Somany Home Innovation Limited, without having made any contact whatsoever with Get on The Web Limited, went straight to filing a UDRP case against Get On The Web Limited regarding the domain name SHIL.com.  
4th January 2021   WIPO notifies Get On The Web Limited of the UDRP challenge.  
29th January 2021   Get On The Web Limited submits their response.  
6th April 2021   WIPO's decision is published denying Somany Home Innovation Limited's complaint and finding Somany Home Innovation Limited guilty of Reverse Domain Name Hijacking.  

 
  LESSONS TO BE LEARNT FROM THIS CASE
 

1) Do your homework.

The panel wrote:

“the Complainants should have carried out a minimal due diligence that would have disclosed the fact that the Complainants would not have succeeded in any way under any fair interpretation of the available facts before the filing of the Complaint”

You have to wonder why they filed this UDRP as they knew or should have known that it would fail and most likely get them branded as Reverse Domain Name Hijackers.    Minimal research (using such tools as UDRPsearch.com would have shown that Get On The Web Limited would not shirk from vigorously defending any UDRP case simply by looking at two other UDRP cases against Get On The Web Limited for domain names QLP.com  and TRTL.com.  Indeed, there is a webpage on the TRTL.com website specifically listing many UDRP cases where complainants knew or should have known that their case would fail.

Somany Home Innovation Limited and their lawyer Manav Gupta, India should have done their homework and done a little research before filing this UDRP case. 

2) Don't make False Claims.

The false claims made by Somany Home Innovation Limited included:

To enhance their case for entitlement, they slipped into their complaint “SHIL Ltd” – no such company exists!  Indeed, there are numerous other companies in India incorporating the word SHIL in their company name – none of which is the Complainant!

They made the claim that:

“It is a matter of record that the Registrar of Trademarks, which is a statutory body, has routinely refused to register HSIL/ SHIL in favor of any other entity or person other than the Complainants”.

Of course this too was blatantly false.  There are ten registered trademarks in India consisting or comprising of the textual component “SHIL”, none of which belong to the Complainant.

The panel stated:

"the Complainants have also provided false information about the inability for any third party to register the acronym “Shil” through the Indian Trademark Office “owing to its well-known status and enormous goodwill” since, as demonstrated by the Respondent (Annex A to the Response), third parties managed to secure trademark registrations for signs identical or similar to SHIL in India. "

They also stated that they obtained favorable decisions from the New Delhi High Court in trademark infringement cases, to which the panel replied:
“.. the Complainants, through its counsel, attempted to give the impression that the Delhi High Court has upheld the Complainants’ rights in HSIL and SHIL but the supporting documents filed as Annexes P-10 to the Complaint do not pertain to the trademarks HSIL and SHIL but to the Complainants’ trademark HINDWARE.”

The Complainants point out that the Somany Home Innovation Limited uses
“the registered Trademark and the surname/family name of the Founder/Promoter and Directors of the Complainants, in its corporate names” and that “in the public perception, the mere mention of the name/marks HSIL/SOMANY/SHIL relates the members of the trade as well as customers solely to the Complainants. Even a cursory Google search is sufficient to demonstrate that the name/ mark 'HSIL/ SOMANY/ SHIL' is associated solely with the Complainants, and as such the Respondents had to also be aware of the same.”.

In the public perception, the mere mention of the name SHIL relates solely to the Complainant? Baloney! Codswallop! Most people worldwide will have never heard of SHIL Indian household products. Besides, there are other companies incorporating "SHIL" in their company names. Furthermore, SHIL is a much used first name as well as second name as a quick search for "SHIL" on Facebook or Google will reveal.

Exclusively relates to the Complainant? The panel stated:

"the Complainants, which are represented by counsel, should have appreciated the weakness of its case and the fact that the acronyms “Hsil” and “Shil” encompassed in the disputed domain names could not be exclusively referable to the Complainants, as claimed in the Complaint without any supporting evidence".

The Complainant Somany Home Innovation Limited claimed that GOTW should have been aware of the Complainant’s usage of its mark  which they claimed had been in commerce for a long period of time before GOTW’s registration of the domain name SHIL.com.

They claimed:

“The marks/registered trademarks of the Complainants have been used in commerce for a long period of time since much prior to the registration of the impugned domain names. As such, the Registrant had constructive notice of the registered trademarks of the Complainants.”

This is clearly false as the domain name SHIL.com was registered in 1999 and Somany Home Innovation Limited was only incorporated in 2017 and had no registered trademark for “SHIL”. As the panelists pointed out the complainant gave no supporting evidence of any asserted common law rights for the acronym “SHIL”. Accordingly, GOTW could not have been aware, as the Complainant stated, of the Complainant’s asserted usage of “SHIL”.

3) Don’t cheat and stick to the rules.

Exceeding the word limit etc. is not only against the rules, but will not endear you to the panelists.

Furthermore making outrageous false claims, claiming the domain was registered “illegally and unlawfully” and falsely claiming that respondent should have known of your existence when you were not even incorporated until 17 years in the future will not win you the case.

4) Don't try and bamboozle the panel by misquoting the UDRP policy - you will be found out.

The Complainant stated:

"It is humbly submitted that Section 4(b)(i) of the UDRP Policy clearly states that registration and acquiring of the domain name for the purpose of selling, renting, or otherwise transferring the domain name for a valuable consideration in excess of documented out pocket costs amounts to registration and use of domain name in bad faith."

when in fact the UDRP Section 4(b)(i) policy states:

"you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name"

Leaving out the key qualifiers, the Complainant essentially claims that it is bad faith to publicly offer a domain name for sale, instead of what the Policy actually states.
 
 

In summing up, the panel gave 5 reasons why, to not only to deny the complaint, but also to deliver a Reverse Domain Name Hijacking verdict.

Finally, the panel wrote a swingeing rebuke about the Complainants’ legal counsel Manav Gupta, India.

“In sum, the Complainant’s professional representative betrays an alarming unfamiliarity with the UDRP and the two decades of precedent under it, to the point of including the Registrar as a respondent merely for performing its non-discretionary function of registering an available domain name. Such conduct in any court would result in a swift dismissal and appropriate sanctions for wasting the parties’ and the court’s time. This Panel is limited to a find of abuse, which it readily imposes.”.

 
 

What is Reverse Domain Name Hijacking (RDNH)?

Reverse Domain Name Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name".

There are numerous sources for "Reverse Domain Name Hijacking".  Amongst these are RDNH.com and HallOfShame.com (which include a list of some of those found guilty of trying to Reverse Hijack a Domain Name in which they had no legal rights. In other words they tried to bully the rightful owners into relinquishing their legitimate property and forcing these innocent parties to spend thousands to defend what they already own).

Before contemplating filing a UDRP case, Complainants should read the CircleID.com article “The Hidden Perils of Filing a Baseless UDRP Complaint”.

  
 
 
 

Why did Somany Home Innovation Limited file this folly of a UDRP case which could never have succeeded?

For a UDRP complaint to succeed, the UDRP rules require both that:

"the domain name has been registered AND the domain name is being used in bad faith".
The domain name SHIL.com was registered many years before Somany Home Innovation Limited even existed (17 years to be precise) and they had no registered trademark.

As the panelists stated :.

"the Complainants knew or should have known that the Respondent was not acting in bad faith, especially considering the disputed domain names were registered long before the Complainants acquired trademark rights for the acronym “hsil” and the asserted common law rights for the acronym “shil”;” and

"the Complainants should have carried out a minimal due diligence that would have disclosed the fact that the Complainants would not have succeeded in any way under any fair interpretation of the available facts before the filing of the Complaint".

Somany Home Innovation Limited and their lawyer Manav Gupta should have known this prior to launching this folly of a UDRP case.

 
 
 
 

Why file an unwinnable UDRP case?

A suggestion to why this happens is succinctly summed up in the article relating to the UDRP case over the 4-letter domain name YISH.com.
Once You’ve Filed a UDRP, There May Be No Going Back :

1. Do not file frivolous UDRP complaints.
Complainants typically file unwinnable UDRP complaints because either they do not understand the UDRP rules or they hope to coerce a domain registrant to transfer the domain. Both can lead to findings of RDNH. …..

2. Research your case before filing.
Asserting trademark rights that do not pre-date the disputed domain name’s creation date is one of the most common reasons UDRP panels find RDNH. Here, the fact that the domain name was created more than a decade before Mr. Wang owned any rights in the term “Yish” should have at least prompted further investigation.

  
 
 
  Somany Home Innovation Limited represented by advocate Manav Gupta are not alone, there are other Indian Companies found to be Reverse Domain Name Hijackers.