OneTab Ltd v Ankit Oberoi
WIPO Case No. D2024-2412
•13-08-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
OneTab Ltd v. Ankit Oberoi
Case No. D2024-2412
1. The Parties
The Complainant is OneTab Ltd, United Kingdom, represented by Adlex Solicitors, United Kingdom.
The Respondent is Ankit Oberoi, United States of America (“United States”), represented by Cylaw
Solutions, India.
2. The Domain Name and Registrar
The disputed domain name <onetab.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2024. connection with the disputed domain name. On June 14, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2024.
The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2024. In accordance with the Rules, paragraph 5, the initial due date for Response was July 9, 2024. Upon the Respondent’s request, the Response due date was extended to July 13, 2024 as per paragraph 5(b) of the Rules. The Response was filed with the Center on July 13, 2024. On August 2, 2024, the Complainant filed a Supplemental Filing. The Respondent filed a Supplemental Filing on August 9, 2024.
page 2
The Center appointed Jeremy Speres, Reyes Campello Estebaranz, and Gerald M. Levine as panelists in this matter on August 1, 2024. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant has, since approximately 2013, offered a web browser extension under the mark ONETAB that functions as a productivity tool designed to reduce web browser tab clutter by allowing the user to store and organize their browser tabs as lists. The Complainant’s extension is available in the web stores of all
major web browsers. As of May 13, 2024, the extension had nearly 3.5 million active weekly users.
The Complainant has operated its main website at “ since approximately 2013. The
Complainant owns United Kingdom Trademark Registration No. 4014513 ONETAB (word) in classes 9 and
42, with a registration date of May 10, 2024; and European Union Trademark Registration No. 018986553
ONETAB (word) in classes 9 and 42, with a registration date of June 20, 2024.
The Respondent is a technology investor and entrepreneur, having co-founded a digital advertising business, Zelto/AdPushup, in 2013, which was acquired by Japanese marketing technology firm Geniee for USD 70 million in 2023. Part of the Respondent’s trade has involved buying and selling domain names consisting of common or descriptive words, a number of which he has listed for sale.
The Respondent acquired the disputed domain name on March 4, 2023, for USD 4,300 through an auction run by the Registrar. After acquiring the disputed domain name, the Respondent offered it for sale via a Registrar parking page to which the disputed domain name resolved. The Respondent initially listed the disputed domain name for sale at a “buy now” price of USD 25,000, which he increased to USD 50,000 once the Complainant expressed an interest in acquiring the disputed domain name via a broker. The disputed domain name presently resolves to a Registrar parking page indicating that the disputed domain name is already registered but may still be available.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name was registered and used in bad faith for the purpose of selling it to the Complainant or its competitor. The Respondent must have been aware of the Complainant when he acquired the disputed domain name, so the Complainant contends, considering the immense repute of the Complainant’s mark, the Respondent’s involvement in the online technology sector, the fact that the Respondent’s co-founder used the Complainant’s app in 2014, and the fact that the Complainant’s extension is predominantly showed in any search conducted over the Internet for the terms “onetab” or “one tab”.
B. Respondent
The Respondent contends that the Complainant has not satisfied the second and third elements required under the Policy for a transfer of the disputed domain name. Notably, the Respondent contends that he registered the disputed domain name in good faith, without knowledge or targeting of the Complainant, with its meaning in the pharmaceutical industry as a contraction of “one tablet” in mind, either for development of a pharmaceutical business or for resale. The Respondent further contends that the term “onetab” comprises two commonplace words and is not exclusively used by the Complainant, pointing to competing browser extensions using the term, its use in the medical industry as a contraction of “one tablet”, its use by guitar
page 3
tablature websites, and various third-party trademark registrations consisting of “onetab” in the United States
and the United Kingdom.
The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) as it claims that the failed attempt at negotiating its sale with the Respondent.
6. Discussion and Findings
A. Preliminary Issue – Supplemental Filings
The Complainant and the Respondent each filed unsolicited supplemental filings.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of unsolicited supplemental filings. Admissibility of supplemental filings is to be assessed based on relevance, foreseeability, the need to conduct the proceedings with due expedition, and the equal treatment of the
parties so that each has a fair opportunity to present its case. Paragraph 10(b) of the Rules; Societé aux Loteries en Europe, SLE v. Take That Ltd., WIPO Case No. D2007-0214; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.6.
| reasonably have been anticipated by the Complainant, e.g., the Respondent’s counteroffer of USD 20,000 | The Response included evidence that was peculiarly within the knowledge of the Respondent that could not that extent, the Panel admits the Complainant’s Supplemental Filing. |
| The Complainant’s Supplemental Filing included evidence not included in the Complaint that the Respondent should be given an opportunity to respond to, e.g., the five new annexures introduced in the Complainant’s Supplemental Filing. To that extent, the Panel admits the Respondent’s Supplemental Filing. | |
| B. Identical or Confusingly Similar | |
| It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. | |
| The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel also finds that the Complainant has established unregistered trademark rights for the purposes of the Policy. WIPO Overview 3.0, section 1.3. | |
| The Complainant’s ONETAB mark is plainly identical to the disputed domain name for the purposes of the Policy. WIPO Overview 3.0, section 1.7. | |
| The Panel finds the first element of the Policy has been established. | |
| C. Rights or Legitimate Interests | |
| Given the Panel’s findings in relation to bad faith, it is not necessary to consider the second element of the Policy. |
page 4
D. Registered and Used in Bad Faith
The evidence in this case is exceptionally finely balanced.
The primary evidence in favor of the Complainant indicating targeting is as follows:
- The Complainant began trading under its ONETAB mark roughly ten years prior to the Respondent’s acquisition of the identical disputed domain name, and the Complainant clearly enjoys unregistered rights in its mark that long predate the Respondent’s acquisition. The Complainant’s mark would appear to be well
known, at least within its niche of browser extensions, and probably more broadly within the web software
industry. For example, the majority of Internet search results for “onetab” and “one tab”, at least across the
first three pages of results, relate to the Complainant.
| - | The Respondent is a technology investor and entrepreneur. In particular, the Respondent founded a |
successful digital advertising firm. Digital advertising is delivered through browsers and the Respondent would thus have had much exposure to the browser ecosystem. It is therefore quite conceivable that the Respondent encountered the Complainant’s extension prior to acquisition of the disputed domain name.
| - | The Complainant’s evidence establishes that the Respondent’s co-founder used the Complainant’s |
extension in 2014. Although this isn’t direct evidence of the Respondent’s knowledge of the Complainant’s extension, it does at the very least show that those working within the Respondent’s industry and his home country of India (the Respondent describes himself as “an Indian citizen who has primarily been operating from India” despite his address contained within the WhoIs record) have used it, and it is quite plausible that
co-founders could have shared the extension with one another.
| - The Respondent registered <cleargum.com> and offered it for sale. The mark CLEARGUM seems to “cleargum” indicates that all CLEARGUM trademarks are owned by the same entity. There is thus a real possibility that the Respondent at least knew of that trademark before registering that domain name, and it is quite conceivable that the Respondent may have targeted the trademark owner in that instance. Given the apparent repute of the CLEARGUM mark and the fact that it is apparently exclusively associated with one party, this would, prima facie, seem to be an instance where it would not be unreasonable to conclude that the Respondent at least should have known of the trademark. WIPO Overview 3.0, section 3.2.2. be well known and exclusively associated with a single medicinal chemical producer, at least insofar as | |
| - | The Respondent doubled his listed asking price for the disputed domain name when he was informed |
by the broker about an enquiry from a potential buyer. Although the Respondent was not informed of the identity of the interested party by the broker, a simple Internet search would have given the Respondent a good idea of who the interested party was, given that the Complainant is the most prominent user of the term
“onetab” at least insofar as Internet search results are concerned. It seems quite conceivable that this is Respondent’s actions in this regard seem somewhat unprincipled. Listing a domain name for sale for one price, and then drastically increasing that price as soon as there is an enquiry about it seems like a questionable practice, albeit not an illegal one. This is evidenced in the broker’s surprise once he learned of the price increase, and his subsequent asking of the Respondent how he could explain this to the potential buyer.
what caused the Respondent to double his asking price. In any event, regardless of whether the
The primary evidence in favor of the Respondent indicating good faith is as follows:
- There is no direct evidence of targeting. The Respondent has not done anything overtly targeting the Complainant, and all the evidence indicating targeting is circumstantial.
- The term “onetab” (or “one tab”) is potentially descriptive of a variety of things, and this is borne out by the fact that it is not exclusively associated with the Complainant in use. There is another browser extension
page 5
using the term as a “brand” name and two others which use it as part of their name. It is used in the medical educational tablet computers. Other domain names consisting of “onetab” have been used for music tablature. The Panel’s independent search of the website archive Wayback Machine revealed the disputed domain name itself previously resolved to a music download website in 2003, per the following link: “web.archive.org/web/20030602170715/onetab.com”.
industry descriptively as a contraction of “one tablet” and as the brand name of a cold and influenza
medication. The similar domain name <1tab.com> was previously used by an online pharmacy in the
| - | The Panel’s independent search of the TMview database for “onetab” revealed eight different |
registered trademarks consisting of ONETAB (some with stylization and/or a device) owned by seven
different owners in various classes and jurisdictions.
- Apart from <cleargum.com>, the acquisition of the disputed domain name seems consistent with the Respondent’s apparent practice of registering descriptive domain names for resale, not for their trademark value but rather their semantic value.
| - | The Respondent has a certain history of registering inherently descriptive medical domain names. He |
owns <hindustanhealth.com>, <neuralcare.com>, and <medagent.com>. The latter was acquired by the Respondent three days before he acquired the disputed domain name, and is similarly composed to the disputed domain name, consisting of a contraction of a medical term plus the uncontracted form of another
descriptive word. However, the evidence does not permit the Panel to reach any conclusion about the
Respondent’s purpose for acquiring <onetab.com>.
- Paradoxically, the fact that the Respondent doubled his asking price for the disputed domain name
upon learning of an enquiry from an interested buyer, unprincipled as it may have been, may point away from
the Respondent having targeted the Complainant at the time of initial acquisition of the disputed domain
name. As discussed above, it is quite conceivable if not likely that the Respondent doubled his asking price
after conducting research into the identity of the potential buyer. After he had established that the potential
buyer could well be the Complainant (given that it is the most prominent user of the mark) it is very plausible
that he doubled his asking price upon learning that the Complainant was successful and of means. If that is
the case, it points away from him having targeted the Complainant earlier, at the time of acquisition of the
disputed domain name, bearing in mind the conjunctive nature of the bad faith element. If he had targeted
the Complainant from that early point, his asking price would probably have been the higher one to begin
with and there would not have been any need to increase it later.
On the record before it, the cumulative weightings of the factors for either Party are so close that the Panel cannot say with confidence that either outweighs the other. The Panel’s view is that it would require the evidentiary tools available to a court having greater probative capacity such as discovery, cross examination, subpoenas, criminal sanctions for perjury etc., to decide which of the Parties’ positions is the more likely.
Given that the burden of proof is on the Complainant, the Panel finds the third element of the Policy has not been sufficiently established. However, this should not be understood as an approval of the Respondent’s actions, but rather a consequence of the Panel’s view, on the record before it, that this case is better suited to court adjudication.
The Panel further considers that should new material evidence come to light in future that is reasonably unavailable to the Complainant at the time of the present proceeding clearly demonstrating that the disputed domain name is targeting or has targeted the Complainant, it may be possible for the Complainant to refile the Complaint, subject to the usual considerations on refiling. WIPO Overview 3.0, section 4.18.
page 6
E. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at RDNH or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16.
The Panel declines to find RDNH for the following reasons: The merits are extremely close, and the Complainant’s case was an arguable one about which reasonable minds could differ. The Complainant’s first usage of and unregistered rights in its mark long predate the Respondent’s acquisition of the disputed domain name, which is identical to the Complainant’s mark. The Respondent’s co-founder used the Complainant’s extension in the past and the Respondent may well have had prior knowledge of the extension. The Respondent’s registration of <cleargum.com> is questionable, as discussed above.
All of this suggests that the Complainant genuinely believed this to be a case of cybersquatting, and that belief does not seem to have been unreasonably held in light of these facts.
7. Decision
For the foregoing reasons, the Complaint is denied.
/Jeremy Speres/ Jeremy Speres Presiding Panelist
/Reyes Campello Estebaranz/ Reyes Campello Estebaranz Panelist
/Gerald M. Levine/
Gerald M. Levine
Panelist
Date: August 14, 2024
0
0
0