Oravel Stays Private Limited, owner at OYO Rooms filed for it’s first UDRP with WIPO upon domain name OYOLIFE.com, since it launched its room rental service in October 2018 under the name OYO Living and later renamed to OYO Life.
OYO Life has official website at OYOLife.in. At Google Play store, user reviews are not up to the mark. (view here). While last month, OYO Life celebrated it’s one year of completion and claimed to be India’s largest co-living company one year after inception (news here). Otherwise OYO Rooms have been in operation since 2013 and Trademark that an Indian can neither ignore nor deny it’s knowledge, as you would find a OYO Hotel in every other street of every Indian City.
On 27 November 2018, Mr Vijay Kumar Kannan from Bangalore registered the domain name OYOLife.com for own purposes. But soon thereafter he started hearing from OYO Rooms, showing interest in the domain name. But as the registrant had legitimate interests, therefore no price was ever quoted to OYO Rooms for the Domain Name. Later, OYO Rooms served the Domain registrant with a Legal Notice as well in February 2019.
In August 2019, OYO Rooms finally filed for UDRP over OYOLife.com. The proceedings commenced on 23 August 2019.
Normally UDRP proceedings complete in 1-2 months period. But the case is still in active status as on 17 November 2019, as these UDRP proceedings will complete 3 months, later this week. It seems to be a even fight between the parties who both are from India, and accordingly panelist appointed is Indian as well.
Now OYOLife is not actually a registered or pending Trademark in Indian Trademark Registry records for the Complainant company but seems they are relying upon the registration and popularity of OYO mark, which has been in use since 2013 and is almost a street name in India.
Update: Decision received on 20 November 2019. Commencement date was 23rd August 2019
The Complainant states it was founded by Ritesh Agarwal who received the Thiel Fellowship Award in 2013 and was featured in the Forbes 30 Under 30 in Consumer Tech in 2016. The Complainant contends that it is South Asia’s largest hotel chain and its business covers 800 cities and 23,000 hotels in India, Nepal, China, Malaysia, Indonesia, United Kingdom, United States of America, United Arab Emirates, Japan, and Turkey.
The Complainant contends that it is backed by investors such as Soft Bank Group, Lightspeed India and Sequoia Capital among others. The Complainant states it has received international and national accolades; Winner of the 2017 Real Innovation Award 2017 by the London Business School, Top 10 Most Innovative Companies of the World by Fast Company, India Honourees 2018, ET Start-Up of the year 2018, India’s Most Promising Hotel Network (Holiday IQ Better Holiday Awards 2017), NDTV Dream Chaser of the Year (2016), IAMAI Digital Start-up of the Year (2016), Business Today’s list of India’s Coolest Start-Ups (2016), ranked by LinkedIn as one of the top employee attractors in India for three consecutive years 2016, 2017 and 2018. The Complainant has provided evidence of its registered trademarks for the OYO mark and its variants in countries such as China, Singapore, United Kingdom, United Arab Emirates, Nepal, Kuwait, Bahrain, and Saudi Arabia. The Complainant states its mobile application for OYO, which is used by its customers to book hotels and other services was launched in May 2015, and it has 10 million downloads from the Play Store.
The Complainant states that its OYO LIFE brand offers long term fully managed accommodation primarily meant for young professionals and students and is one of the largest such service with 25,000 beds signed and 20,000 or more beds live, across nine Indian cities. The Complainant claims that OYO LIFE employs more than 1,000 people and has about 2,000 people developing multiple solutions across seven development centres globally. The Complainant states the domain name
The Complainant requests for transfer of the disputed domain on the grounds that: (i) the disputed domain name is identical or confusingly similar to trademarks in which it has rights (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name and (iii) the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Respondent has submitted a response in which he states that he is currently vice-president at PeerHealth. The Respondent alleges that he registered the disputed domain name in good faith by combining two generic terms “oyo” (Japanese term for application) and “life”. The Respondent adds that there are over 1,500 domain names in the “.com” generic Top-Level Domain (“gTLD”), that start with “oyo”. The Respondent argues that three letter words could have many interpretations and refers to the case SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566, where it was observed that three letter acronyms is likely to be of general application to many interested parties and no one party is likely to be able to claim a monopoly in all fields of activity.
The Respondent further argues that “oyo” is a ubiquitous term and there are various connotations of the term “oyo”, such as: Oyo is a city and a state in Nigeria, the Oyo Empire was established in Nigeria in the 12th century, Oyo town is in the Democratic Republic of Congo, there is Oyo river in Indonesia and Oyo music album by the American singer Angelique Kidjo.
The Respondent rebuts the Complainant’s claim that “oyo” is a coined term and states that the Complainant’s tag line “On Your Own” is derived from an Internet slang. The Respondent argues that other parties have trademark registrations for OYO or “oyo” formative names, such as OYO-On Your Own trademark was first adopted by Spykar Lifestyles Pvt Ltd and it has used “oyo” for its company name, Oyo Lifestyle Pvt Ltd. Similarly, Oyo Corporation of Japan has pending trademark registrations in several jurisdictions including India. The Respondent argues that the Complainant’s OYO marks are registered under classes 35, 39, 42, and 43, whereas the area of relevance to the Respondent is health-care. He claims that prior to obtaining the disputed domain name, he searched under class 44 for health-care and found no marks corresponding to OYO LIFE.
The Respondent argues that the Complainant lack rights due to the generic nature of the OYO and OYO LIFE marks. The Respondent states there are various ways in which the combination of terms “oyo” and “life” could be translated in Japanese and one such meaning is “Application of Life”. A Google search for “Application of Life” returns 12,400.000 results, mostly related to software and healthcare and states that he had acquired the disputed domain name for its generic meaning and that he also owns other domain names in his portfolio with the suffix “life”.
The Respondent states that the disputed domain name was registered for use in future business operations and that buying a generic domain name does not require a certificate of intent, vision document, mission statement to be submitted by the Respondent. At the time of registration of the disputed domain name, the Respondent states there was no company, operations, website, applications or trademarks pending with the name “oyo life” or the mark OYO LIFE.
The Respondent asserts that the combination of “oyo” and “life” was coined by the Respondent two months before the Complainant conceived its OYO LIFE mark. The Respondent argues that the Complainant seems to have conceptualized “Oyo Life” on January 29, 2019, and applied for trademark on April 26, 2019, while the disputed domain name was registered on November 27, 2018. The Respondent also argues that the Complainant lack rights in the OYO LIFE trademark, as its trademark applications are still pending. The Respondent adds that the Complainant had filed trademark applications in 2019, under class 44 for POWER STATION BY OYO, WORKFLO BY OYO and SIGNATURE STAYS BY OYO, but no application was made for OYO LIFE in 2018.
The Respondent argues that under the second requirement, it is sufficient that a respondent shows a legitimate right or interest and it is not required that he should have a better right. The Respondent argues that speculating in domain names is lawful and to prove bad faith registration and use it is necessary for the Complainant to show that the Respondent’s intent was to take advantage of the Complainant’s mark. At no time prior to the registration of the disputed domain name, was the Respondent aware of the Complainant or its OYO LIFE mark and argues that the Complainant has provided no evidence of advertisement, marketing spends, sales volume at the date of registration of the domain name, further the evidence of media coverage submitted is from February 2019.
The Respondent states that he did not approached the Complainant to sell the disputed domain name but instead was approached by a person from the Complainant’s organization. The Respondent has filed screen-shots of the text messages exchanged and he states the text messages were followed up by anonymous calls and argues that responding to calls does not constitute bad faith. Further, as the parking page has no reference to the Complainant’s trademark, the Respondent argues that there is no evidence of targeting the trademark. The Complainant states that around the date the Complainant applied for the trademark OYOLIFE in Japan, the legal notice was issued to the Respondent. The Respondent requests a finding of Reverse Domain Name Hijacking.
Parties Submission to the Panel’s Procedural Order 1.
The Panel by Procedural Order 1, dated October 30, 2019, requested the Complainant to provide evidence of use of the OYO LIFE mark prior to November 27, 2018, the date of registration of the disputed domain name. The procedural order specified that such evidence should have been readily available to the public, to establish the Complainant’s use of the OYO LIFE mark. The Complainant in reply to the procedural order, stated there was no evidence of use of the mark for the period mentioned in the procedural order. The Respondent replied and reiterated that evidence of media coverage for the mark OYO LIFE is only after February 2019. The Respondent then drew the Panel’s attention to media reports stating OYO LIFE has completed a year in October 2019, but the Complainant had operated under the brand OYO LIVING from October 2018 till January 2019.
The Domain Name was registered in good faith without the knowledge of the future brand or name of OYO Life. The same has been quoted in the decision as:
“Complainant’s reply to the Procedural Order 1, the Panel finds that the Respondent’s registration of the disputed domain name is likely to have been without knowledge of the Complainant’s OYO LIFE mark.”
Because in order to prove bad faith registration, it must be shown that Respondent registered the Domain Name not because of its common generic or descriptive meaning referring to OYO LIFE, but rather specifically because it corresponded to protected trademark. This reflects the intent required in the Policy, as the Panel stated in Ancien Restaurant Chartier v. Tucows.com Co, WIPO # D2008-0272:
“It is in general essential to finding of bad faith registration and use under the Policy, that Respondent must have targeted Complainant or its trade mark, or at least had Complainant in mind, when it registered the disputed domain.”
To quote Gerald M. Levline (Domain Name Arbitration – Pg 191) “A Panel has to resolve whether in registering the Domain Name, Respondent intended to take advantage of the Complainant’s mark at that time.” That is, it is quite important to establish that Domain Name was registered in Bad Faith, in addition to the Bad Faith use, that is both should be proved separately.
That is, Domain Name was never registered in Bad Faith and it could never be proved, given the following fact !
Numerous businesses in India itself use the brandable term OYO as part of their name as provided above. Moreover, importantly the following Trademarks were registered in India after the Complainant had already started using term OYO in it’s business and also applied for Trademarks since 2014. The third parties that applied for registration of following similar terms in different classes and these Trademarks are successfully registered in India as on date:
“OYO” vide application number 3143770, under class 27 dated 31 December 2015.
“OYO” vide application number 3190362, under class 37 dated 20 Feb 2016.
“OYOfurniture.com” vide application number 3201230, under class 20 dated 1 March 2016.
“OYO” vide application number 3344133, under class 32 dated 24 August 2016.
“OYObaby” vide application number 3413915 and 3413917, under class 25 & 5 dated 21 November 2016 respectively.
“OYO” vide application number 3551775, under class 2 dated 18 May 2017.
“OYO” vide application number 3728507, under class 12 dated 16 January 2018.
The above proves that Complainant does not have exclusive rights to the mark OYO, while the “OYO LIFE” is pending registration. That is, third parties have rights to apply for Trademark Registration under different classes unrelated to the Complainant, like it has been registered in class 2, 5, 12, 20, 25, 27, 32 and 37 from 2016 till 2018 by various third parties as stated above.
Panel held OYO is not an inventive mark
The Panel has noted the Respondent’s arguments rejecting the Complainant’s claim that its OYO mark is an invented mark. Based on the submissions and evidence provided by the Respondent the Panel acknowledges that it is likely that the OYO trademark could have been adopted by other entities prior to the Complainant’s adoption of its OYO mark and also notes that there are geographical and other names and meanings for the term “oyo”. The Panel is therefore inclined to agree with the Respondent’s submission, that the Complainant’s claim of its OYO mark being a coined or invented term is imprecise.