WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tadashi Shoji v. Karolina Karp Case No. D2009-0831 1. The Parties
The Complainant is Tadashi Shoji, Los Angeles, California, United States of America, represented by Buchalter Nemer, United States.
The Respondent is Karolina Karp, Warsaw, Poland. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2009. On June 23, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On June 23, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2009. The Response was filed with the Center on July 13, 2009.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 23, 2009. The Panel finds that it was properly constituted. 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.
On July 23, 2009, the Complainant sent to the Center an unsolicited Supplemental Filing, of which the Center acknowledged receipt to the Complainant and forwarded to the Panel on July 24, 2009. 4. Factual Background
Factual information is taken from the Complaint. The Complainant is the founder of and chief designer for the Tadashi and Tadashi Shoji fashion lines. The fashion house was established in 1982 in Los Angeles, and quickly became known for its original and innovative concepts, especially for women's contemporary special occasion dresses. It is now an international designer and manufacturer of clothing, with sales ranging from Southern California to Japan. The TADASHI trademark has been used since at least as early as 1996.
The Complainant holds trademarks in the relevant classes including:
2682363, United States Patent & Trademark Office (USPTO), T TADASHI and design, issued February 4, 2003;
3054263, USPTO, TADASHI, issued January 31, 2006;
3030753, USPTO, TADASHI, issued December 13, 2005;
3339021, USPTO, TADASHI SHOJI, issued November 20, 2007;
5084052, Japan, TADASHI SHOJI, issued October 12, 2007;
005769567, European Community, TADASHI SHOJI, issued February 2, 2008;
The Complainant has also registered domain names including, in 2002, .
Little factual information is available about the Respondent. The disputed domain name was registered on May 6, 2007; was registered on April 24, 2009; and was registered on May 29, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant is the owner of the trademarks T TADASHI and DESIGN, TADASHI, and TADASHI SHOJI in the United States, as well as several other jurisdictions. The disputed domain names all fully incorporate the Complainant's registered trademarks. One consists of the Complainant's trademark in full. Another consists of the Complainant's trademark with a hyphen. The third consists of the Complainant's trademark with the word “collection” which does nothing to differentiate the Complainant's marks from the relevant disputed domain name and may increase the likelihood of consumer confusion.
On April 23, 2009, the Complainant initiated correspondence with the Respondent with a view to buying the disputed domain name . The correspondence continued through April 24, 2009, and ended without result.
Later the Respondent registered the disputed domain names and , which the Complainant contends was intended to block him from registering the same domain names.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has no relationship with the Respondent, nor has the Complainant given permission or authorized the Respondent to register or use the disputed domain names. To the best of the Complainant's knowledge, prior to having registered the domain names, the Respondent has not used or been commonly known by the trademark portrayed in the contested domain names. The Respondent or her business may in fact be known by the name Old Farts Young Tarts, or, according to correspondence received, as Zespol Deco Studio Designs.
The Respondent has no bona fide interest in the disputed domain names and there has been no bona fide offering any goods through them. The content of the corresponding websites is or leads to pornography in order to induce the Complainant to buy the disputed domain names.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith.
The corresponding websites display or lead to pornography, which it is submitted, according to precedent, when coupled with the intentional targeting of another's trademark, is a significant indicator of bad faith. The disputed domain names and were registered and provided with pornographic content more recently and solely for the purpose of manipulating the Complainant.
The Complainant contends that the disputed domain names were registered and used intentionally to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark. The attempt to sell a disputed domain name for USD 30,000, which is far in excess of registration costs, is indicative of bad faith.
The Complainant says that, given the widespread use of the Complainant's trademark and that it is uncommon, the Respondent must have been aware of it and cannot have happened upon it independently. The Respondent's websites tarnish and dilute the Complainant's trademark and may lead to a loss of clients.
The Complainant has submitted a number of prior UDRP decisions that it would like the Panel to treat as precedent.
The Complainant requests that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent denies the Complaint and makes comprehensive contentions that, in so far as they may be relevant to this dispute, include the following.
The Respondent refers initially to the disputed domain name . She says that this was legally purchased. At the time of registration on May 6, 2007, a check by her did not appear to show that the name was a trademark. The disputed domain name was acquired because the Respondent's two cats are called Tadashi and Shoji. Copies of veterinary records of cat de-worming and other dosings, accompanied by pages displaying the cat names Tadashi and Shoji, are submitted in evidence. The website of the disputed domain name has carried pictures of pet animals and some notes.
The Respondent did not know of Mr. Tadashi Shoji because he is not a well-known fashion designer in Europe and Poland. The Respondent cites a number of UDRP cases in which other respondents claimed not to have heard of famous fashion-related names.
The Respondent says that on June 23, 2008, an email was received that said: “Dear Madam or Sir We would like to buy domain . Our price is $28 000 with tax. Please let me know, if it's possible to buy domain”. The Respondent says that because the amount offered was so large in a Polish context, she regarded the email as a joke.
The Respondent contends that in April 2009, the Complainant (through Buchalter) offered to buy for USD 250. The Respondent replied that the price previously offered was USD 28,000 and that she would not sell for less than USD 30,000.
The Respondent says that on May 6, 2009, Mr. Jason Fisher of Buchalter offered USD 1250, and on a later date offered USD 2250, for . The Respondent says she believes that the offeror deviously represented himself as the owner of a small company called Qzywot, but in fact represented the interests of the Complainant.
The Respondent later registered the additional disputed domain names and .
The Respondent contends that she did not register the disputed domain name in bad faith because it was registered prior to the trademark. The Respondent is not using the disputed domain name in bad faith, because the corresponding website does not provide links to products that compete with the Complainant's products. Upon submitting the registration form the Respondent checked “” and, as at May 6, 2007, the disputed domain name was not a trademark.
The Respondent contends that she obtained the disputed domain names on a basis of first come, first served, and that the Complainant is exerting pressure to acquire them. The Complainant should have registered domain names containing the word “Shoji” when he had the chance.
The Respondent feels at a disadvantage in being in Poland, and considers that the Complainant should have sent documents related to this dispute to her in Polish.
The Respondent addresses specifically the elements of the Policy that need to be proved under paragraph 4(a). As to whether the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent provides reference documents showing that the words Tada and Shishoji (having the same effect as Tadashi Shoji) are words in themselves. Hiroshi Tada is a Japanese karate teacher, and there is a Naritasan Shishoji temple in Narita, Japan. The Respondent reiterates that the trademarks for TADASHI SHOJI were registered after the disputed domain name , which is not commercial, has not been offered for sale, and that she did not know of the Complainant.
As to rights or legitimate interests in respect of the disputed domain names, the Respondent reiterates her priority registration of , the connection with her cats, the absence of commercial activities that would be competitive with the Complainant, and that the disputed domain name was not offered for sale.
As to bad faith, the Respondent reiterates that she did know of Tadashi Shoji. The trademark TADASHI SHOJI was registered at the USPTO and at the Office of Harmonization in the Internal Market after was registered.
The Respondent says that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring to the Complainant, for valuable consideration in excess of out-of-pocket costs directly related to registration. The Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant's business.
The Respondent says the results of typing Tadashi Shoji into Google do not contain any of the disputed domain names , or , which demonstrates that the Respondent has not derived any profits from their use.
The Complainant reiterates her belief that the Complaint was behind the offer of ultimately USD 2250 to her for the disputed domain name .
The Respondent has submitted a number of prior UDRP decisions that she would like the Panel to treat as precedent. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” The Panel did not find the need for supplemental filings from the Parties and did not admit the Complainant's submission dated July 23, 2009, in reply to the Response. A. Identical or Confusingly Similar
The Complainant has submitted copies of trademark registration documents for three trademarks comprising the words TADASHI SHOJI. The trademarks are registered in the name of the Complainant and the Panel is satisfied that the Complainant has rights in them.
The gTLD directory designation “.com” is disregarded in the context of confusing similarity between a domain name and a trademark. The remainders of the disputed domain names , and all incorporate the distinctive trademark TADASHI SHOJI in its entirety. The finding to be made under paragraph 4(a)(i) of the Policy is specified in the present tense, and at this stage any question of the registration dates of the trademarks and disputed domains need not be pursued. The Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark TADASHI SHOJI, and that the additional word “collection” in one of the disputed domain names does not detract from confusing similarity. The Respondent's claim that the disputed domain names may be interpreted as containing the words “Tada” and “Shishoji” is found to have no bearing on the question of confusing similarity between the disputed domain names and the Complainant's trademarks.
The Complainant has submitted copies of trademark registration documents for three trademarks comprising or containing the word TADASHI alone, in which the Panel is satisfied that the Complainant has rights. The three disputed domain names contain the trademark TADASHI, which is identical to the Complainant's trademark. The disputed domain names also contain the word SHOJI, which does not detract from the similarity but increases it since the Complainant's other name is Shoji. The Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks containing the word TADASHI, and that the additional word “collection” in one of the disputed domain names does not detract from confusing similarity. B. Rights or Legitimate Interests
The Complainant has set out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain names. The Complainant states that he has no relationship with the Respondent and has not permitted the Respondent to register or use the disputed domain names. In anticipation of any Response in the terms of paragraph 4(c) of the Policy the Complainant asserts that to the best of his knowledge the Respondent has not been commonly known by the disputed domain names. Furthermore the use of the disputed domain names is not bona fide but is for reference to pornographic websites.
The Respondent may refute the Complainant's prima facie case in accordance with the provisions of paragraph 4(c) of the Policy or in any other way acceptable to the Panel. Paragraph 4(c) of the Policy reads in part, with the Panel's emphasis:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel is unable to find any evidence that any of the disputed domain names resolve to a website through which the Respondent is making a bona fide offering of goods or services, nor is there any evidence of any demonstrable preparations concerning the same within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent claims that the domain name first registered by her, , was named after her cats Tadashi and Shoji. The Panel is unable to find evidence that the Respondent Karolina Karp, either as an individual, or through her business Zespol Deco Studio Designs, has commonly been known by any of the names , or , or anything similar, within the meaning of paragraph 4(c)(ii) of the Policy.
It is noted that according to the evidence the disputed domain names are in use in connection with websites that portray pornography. An intention to tarnish the Complainant's trademark is found to be clear from the content and tone of the Respondent's email of April 24, 2009 (timed 12.51 pm) to the Complainant. In the terms of paragraph 4(c)(iii) of the Policy the Panel does not find any of the necessary elements of legitimate noncommercial or fair use without intent to tarnish the Complainant's trademark.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Respondent has made an issue of the fact that the Complainant's trademarks for TADASHI SHOJI in full were registered after the disputed domain name was registered on May 6, 2007. This is not an issue in respect of the other two disputed domain names, registered on April 24, 2009, and , registered on May 29, 2009.
According to the trademark registration documents for TADASHI SHOJI, trademarks were issued by the USPTO on November 20, 2007; in Japan on October 12, 2007; and by the European Community (EC) on February 2, 2008; all these dates are later than the registration date of the disputed domain name .
Generally, bad faith is not found if a trademark did not exist when a conflicting domain name was registered. There may be an exception, however, if there are grounds to conclude that a domain name was registered in the knowledge or expectation that the registration of a corresponding trademark in the future was reasonably likely, for instance, through inside knowledge or an anticipated merger of two well known company names.
According to the evidence, the expansion of the trademark TADASH to TADASHI SHOJI could reasonably have been foreseen. The Complainant says in evidence that in 2006, he launched the Tadashi Shoji line, featuring high-end, couture products. Furthermore, perusal of the trademark documents for TADASHI in the public record at the USPTO shows all to be registered in the following terms:
“(REGISTRANT) Shoji, Tadashi INDIVIDUAL ~ UNITED STATES
3016 E. 44th Street Vernon CALIFORNIA 90058.”
Thus, through the publicly available registration documents for TADASHI trademarks granted between February 4, 2003 and January 31, 2006, and through the public activities of the Complainant in launching the Tadashi Shoji line of products in 2006, it would have been clear to any interested enquirer that Shoji was the other name of the designer Tadashi, and reasonably foreseeable that Tadashi Shoji could be moving towards the use of his full name as, at the very least, a de facto or common law trademark in commerce. At the time when the disputed domain name was registered on May 6, 2007 this prediction would have been uncannily correct as the Complainant had, in fact, already filed applications for the TADASHI SHOJI trademark on March 7, 2007 at the USPTO; on April 11, 2007 in Japan; and on March 19, 2007 in the EC.
Taking into account particularly the launching of the Tadashi Shoji line of products in 2006, the Panel does not accept that the relativities of the dates on which the disputed domain name was registered on the one hand, and on which the TADASH SHOJI trademarks were granted on the other, are sufficient to enable the Respondent to negate the Complaint of bad faith registration in respect of that disputed domain name.
The Respondent's website corresponding to is portrayed as having been devoted to her cats Tadashi and Shoji. The Respondent says these names are “very popular in Japan and in USA” and submits a screen-print from the website of Baby Names World, which says no such thing. The Respondent says (verbatim), “I could not registered domain in bad faith because I didn't know who is Tadashi Shoji. Maybe he is famous in his country, but in Poland nor Europe nobody heard about this designer”. If that is so, then the selection of precisely his two names for her two cats (born more than a year apart) was a feat of coincidence that taxes the credulity of the Panel.
The Respondent exhibits an email that the Panel finds to be similarly extraordinary, purporting to be an offer of USD 28,000 for the disputed domain name. Since there has been no statement that the disputed domain name was on offer for sale, or that any price had been asked, a spontaneous offer from a mysterious source complete with a price that the Respondent herself describes as a “joke” and “deceitful” is indeed lacking in credibility. So is the Respondent's disinterest in pursuing at least a superficial enquiry in reply, given her readiness later to demand a broadly similar price.
The sequence of events when the Complainant emailed the Respondent with a view to buying the disputed domain name is revealing. The Complainant's email, dated April 23, 2009 under the subject line “TADASHISHOJI.COM”, said briefly “How much are you selling the domain?” The next day, April 24, 2009, the Respondent registered the disputed domain name and replied to the Complainant “We also have We can sell both domains. Greetings Karoline Karp”. On the same day the Complainant offered USD 250 for and the Respondent replied “Thank you for your offer. We had an offer from other buyer for 30 000 $ so the price won't be lower. We can sell it for 35 000 $”. After a disinterested reply from the Complainant, the Respondent, still on April 24, 2009, sent the Complainant an email to say “Please visit both domains and look what is there now. I find it hard to believe that PR and Marketing Department of Tadashi Shoji and [Associates] do not care so much for company's image”. There was no further exchange.
The meaning of the Respondent's statement “look what is there now” was that, according to the evidence, the disputed domain names and (and a month later, ) led to commercial pornographic sites, screenprints of which have been submitted by the Complainant. The Respondent asserts, without evidence, that these are fakes; the Panel prefers the evidence of the Complainant.
The Respondent claims in effect that the disputed domain name was created innocently through her interest in pets and animals. In an email to the Center dated June 26, 2009, comprising a preliminary response, the Respondent said that unlike the Complainant she did not have legal representation, and “The whole situation is confusing for me”. That stance does not fit comfortably with her highly professional full Response, which cites eight previous WIPO UDRP decisions with several pivotal excerpts, and also displays familiarity with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. (The Panel does, of course, encourage the most careful presentation of any Response).
Having regard to all the evidence, the Panel finds it to be more probable than not that the Respondent's choice of the disputed domain name was not coincidental but was made in the knowledge of the Complainant's name and anticipated formal trademark, and that the primary purpose was to sell it ultimately for a profit, constituting bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy.
The circumstances of the registration of , immediately upon receipt of an enquiry about the sale of , and in association with an offer by return to sell both domain names to the Complainant, are even more strongly indicative of bad faith within the terms of paragraph 4(b)(i) of the Policy.
The circumstances of the registration of and , following receipt of an enquiry about the sale of , are found by the Panel on the balance of probabilities to have been an attempt to block the Complainant from registering those domain names and to have been part of a pattern of such conduct, constituting bad faith within the terms of paragraph 4(b)(ii) of the Policy.
The redirection of all three disputed domain names to commercial pornography, two of them within hours after an attempted USD 30,000 sale did not eventuate and the third a month later, is found by the Panel to have been more probably than not an act of retaliation or overt pressure on the Complainant and to amount, in and of itself, to bad faith registration and use in the general terms of paragraph 4(a)(iii) of the Policy. More specifically this action is also found by the Panel to amount to an intentional attempt to attract Internet users by their confusion with the Complainant's trademark for commercial gain (whether of the Respondent or another), constituting bad faith under paragraph 4(b)(iv) of the Policy.
The Panel finds irrelevant and has not entered into the Respondent's assertion to the effect that offers of USD 1250 and USD 2250 may have been made to her by someone acting covertly in the Complainant's interests. Barring fraud, bargains are made between willing buyer and willing seller. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , and be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: August 6, 2009
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