The Complainants are Samrat N. Zaveri and Shaze Luxury Retail Private Limited, India, represented by Khaitan & Co., India.
The Respondent is Warren Weitzman, Caramba LLC, United States of America (“United States”), represented by Greenberg & Lieberman, LLC, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. The Response was filed with the Center on March 3, 2020. On March 4, 2020, the Complainant sent the Center an unsolicited supplemental filing in rejoinder to the Response. The Center appointed Adam Taylor as the sole panelist in this matter on March 5, 2020. 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 March 11 and 12, 2020, the Respondent and the Complainant respectively filed additional unsolicited supplemental filings responding to the previous filing by the other party. On March 12, 2020, the Panel issued an Administrative Panel Order ordering that no further supplemental filings should be made without prior Panel approval. 4. Factual Background The First Complainant is the founder of the Second Complainant. Both are referred to collectively below as “the Complainant” unless it is necessary to refer to them separately. The Complainant and its predecessors have used the mark SHAZE since 2001 in connection with the supply of jewellery, home décor, clothing accessories, watches, perfumes, and other similar products. The Complainant operates a website at “www.shaze.in”. The Complainant owns a number of registered trade marks including: - Indian trade mark No. 1248891 for a figurative version of the word “shaze”, filed on November 11, 2003, in class 14; - Indian trade mark No. 2477784 for the word “shaze”, filed on February 13, 2013, in class 14; - European Union trade mark No. 017944510 for the word “shaze”, filed on August 16, 2018, in classes 14 and 35; and, - United States trade mark No. 5912686 for a figurative version of the word “shaze”, filed on February 8, 2019, in classes 14 and 35. The Respondent, who deals in domain names, registered the disputed domain on November 10, 2002. Since it was registered, the disputed domain name has been used for parking pages with pay per click (“PPC”) links relating to a wide variety of goods and services. These pages also included a number of statements to the effect that the disputed domain name was “planned for development”. As of February 6, 2020, the parking page included a “[b]uy this domain” link which resolved to a page inviting offers in excess of EUR 5,000. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions: The Complainant’s products are globally recognised. The Complainant has generated substantial revenue in relation to the supply of goods or services under its mark ranging from approximately INR 2 million to INR 240 million over the period 2010 – 2019. The Complainant has also incurred substantial expenditure promoting its mark in “diverse international / Indian media”. This is evidenced by the substantial advertising relating to the Complainant on the Internet as well the references to the Complainant in various articles and publications. Accordingly, the Complainant’s mark has acquired an extensive worldwide reputation and goodwill including through use on well-known retail websites in various countries such as “Amazon.com” in the United States. The extent of its reputation is also evidenced by the various awards received by the Complainant. The Complainant has statutory and common law rights in the term “shaze”, which it adopted before the Respondent. The disputed domain name is identical to the Complainant’s well-known trade mark, which it incorporates in its entirety. The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has not authorised the Respondent to use the Complainant’s mark. The Respondent’s only use of the disputed domain name is to offer it for sale, which is not a legitimate use of the disputed domain name. The Respondent’s business is to register domain names without having any legitimate interests therein and then wait for a prospective buyer to pay a hefty sum to acquire the domain name. Such activity is illegitimate. The Respondent’s statement of intent to use the disputed domain name for future development, which has appeared on the website at the disputed domain name since the disputed domain name was registered, is designed to give the false impression that it has a legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent cannot establish rights or legitimate interests in the disputed domain name because the Complainant is the prior adopter and user of the mark. The disputed domain name has been registered and used in bad faith. The mark SHAZE is an invented mark without any dictionary meaning. Any person other than the Complainant who adopts this mark must be assumed to have copied it from the Complainant. The fact that the Respondent registered the disputed domain name in 2002, immediately after the Complainant’s launch, proves the Respondent’s lack of bona fides. It is inconceivable that the Respondent was unaware of the Complainant’s marks given that the Complainant’s marks have acquired “tremendous” goodwill and reputation across the globe. It is also inconceivable that the Respondent had any purpose other than to profit from the reputation of the Complainant’s marks. The Respondent registered the disputed domain name to misleadingly divert consumers, to tarnish the Complainant’s marks or to force the Complainant to buy it from the Respondent at a higher price. The public are likely to assume that the disputed domain name is connected with the Complainant. The Respondent is using PPC links to earn advertising revenue by misdirecting traffic to the disputed domain name based on its similarity with the Complainant’s mark. The Respondent habitually registers domain names of other entities in bad faith. See Vincle Internacional de Tecnologia y Sistemas, S.A. v. Warren Weitzman, Caramba LLC,WIPO Case No. D2018-1182. In other cases, the Respondent usurped domain names by submitting responses using technical loopholes. Registration of the disputed domain name constitutes trade mark infringement, passing off and breach of the Registrar agreement. Before the initiation of the present proceedings, the Complainant had attempted to resolve this case by approaching the Respondent but the Respondent sought an unreasonable price for the disputed domain name and increased the price thereafter. B. Respondent The following is a summary of the Respondent’s contentions: The Complainant lacks exclusive rights in the term “shaze”. The Complainant has deliberately misled the Panel by claiming that “shaze” is not a dictionary term. The word “shaze” when translated from Japanese has various meanings, including “company policy”, “refusal”, and “plantain”. The word “shaze” is also used by numerous other entities round the world. A Google search for the term, but excluding the Complainant’s primary products, brings up over 400,000 results including as the name of a hip-hop artist, a type of beach chair, and the name of a medical group, as well as a place in India. There are many other “shaze”-related domain names, most of which are not owned by the Complainant. Even a registered trade mark provides no rights under the Policy if deemed to be descriptive or generic by a panel. The mark in issue is generic. Offering the disputed domain name for sale constitutes use in connection with a bona fide offering of goods or services. The fact that the disputed domain name is generic and usable for a variety of generic purposes further establishes the Respondent’s legitimate interest in the disputed domain name. The Complainant has only made a general statement that the registration was in bad faith but has not proved it. The Respondent registered and used the disputed domain name in good faith. It did not register the disputed domain name to sell to the Complainant or as part of an abusive pattern of blocking trade mark owners or to create confusion with the Complainant’s mark. The Respondent is located in the United States and has never heard of the Complainant. The Complainant did not own a United States trade mark until 2018 and so there could be no assumption that the Respondent was aware of the Complainant at the time of registration of the disputed domain name. The Complainant has not alleged that the Respondent used the disputed domain name in relation to any of the Complainant’s goods or services. The Complainant is barred by laches, which provides a bar to the Complainant claims after a sufficient period has passed and is a factor even before that period expires. The Complainant has waited for more than 18 years to file this case. For that entire time, the Respondent pointed the disputed domain name to a landing page offering the disputed domain name for sale but the Complainant did not even reach out to the Respondent during that period. This is a case of reverse domain name hijacking. The Complainant is attempting the “rob” the Respondent of the disputed domain name, which it has owned since 2002. The Complainant knows there is no plausible basis for its Complaint. The Complainant is using the UDRP to obtain the disputed domain name because it is entering the United States market and it was unwilling to discuss a price above the Respondent’s EUR 5,000 asking price. C. Complainant’s Supplemental Filing The following is a summary of the Complainant’s first supplemental filing insofar as admitted. See section 6B below. The evidence of the Japanese dictionary meaning of the word “shaze” is irrelevant because the source is obscure. The definition is also unreliable because unrelated meanings have been given for the same word. In any case, the Respondent has not proved use of the disputed domain name in connection with the alleged dictionary meaning. The Respondent’s evidence of use of “shaze” by other entities is misleading because the search results have been adjusted to exclude the Complainant’s listings, which are extensive. The evidence in fact supports the Complainant’s case because it appears to include references to distances from the Complainant’s stores in Mumbai. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, - the disputed domain name has been registered and is being used in bad faith. A. Late Response The Response was received by the Center one day after the due date of March 3, 2020. Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence. While the Respondent should have provided an explanation for the late filing, the Panel has nonetheless decided to admit the Response given that it was filed only a day late and that the Complainant has raised no objection B. Supplemental Filings As mentioned in section 3 above, the Complainant has made two supplemental filings and the Respondent has made one. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6, states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance. Neither party has made any effort to demonstrate “exceptional” circumstances justifying the filings. Each has proceeded as if there was an automatic right of rejoinder to the last filing by the other party. Furthermore, in the Panel’s view, much of the material in the filings could have been, or was, included in the party’s primary submission or is not relevant to the issues before the Panel. The Panel has therefore decided to disallow all of the supplemental filings except for part of the Complainant’s first filing responding for the first time to the Respondent’s claim that the disputed domain name was “generic” (summarised above) as well as reference to a Complainant registered trade mark which was not mentioned in the Complaint. The Panel would add that, even had they been admitted in full, the supplemental filings would have made no difference to the outcome of this case. C. Identical or Confusingly Similar The Complainant has established rights in the mark SHAZE by virtue of its registered trade marks for the term as well as unregistered trade mark rights deriving from its use by the Complainant over many years. The Panel disagrees with the Respondent’s contention that even a registered trade mark cannot constitute rights under the Policy if deemed descriptive or generic. While the issue of whether or not the mark is descriptive or generic may become relevant under the other elements of the Policy, such considerations do not arise at this stage. Section 1.2.1 of WIPO Overview 3.0 explains that where the complainant holds a nationally registered trade mark, this prima facie satisfies the threshold requirement of having trade mark rights for purposes of standing to file a UDRP case. Disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. D. Rights or Legitimate Interests It is unnecessary for the Panel to consider this element in light of its conclusion under the third element below. E. Registered and Used in Bad Faith The Complainant must prove, on the balance of probabilities (see section 4.2 of WIPO Overview 3.0), that the Respondent both registered and used the disputed domain name in bad faith. The Panel will first consider the likelihood, based on the evidence before it, that, when the Respondent registered the disputed domain name on November 10, 2002, it did so with the Complainant’s mark in mind. The Complainant says that the fact that the Respondent registered the disputed domain name in 2002, immediately after the Complainant’s launch, proves the Respondent’s lack of bona fides.However, so far as the Panel can tell – and some of the evidence is difficult to follow – there are only three mentions of the term “shaze” predating the Respondent’s registration of the disputed domain name in the materials supplied by the Complainant: 1. An April 24, 2002 article in Times of India headed “Samrat of a trendy concept” about the “fashionable trendsmith store” which refers to “the in-house shaze silverware being done by his wife …”. 2. An April 25, 2002 article in the Chandigargh Tribune entitled “Trendsmith comes to town” mentions the “….exotic silverware collection, Shaze…”. 3. The “About Us” page of an August 2, 2002 archive version of a website at “www.trendsmith.com”, which includes the following sentence (partly cut off): “An unusual silver colect (sic) … Shaze”. In the Panel’s view, these passing references to “shaze” in two Indian newspaper articles and on the Complainant’s website, all three of which were mainly focussed on the Complainant’s Trendsmith brand, do not constitute evidence that the Complainant’s launch of SHAZE (insofar as there was such a launch) was likely to have come to the attention of the Respondent, located in the United States. The Complainant further asserts that SHAZE is an invented mark without any dictionary meaning and that anyone else who uses the term must have copied it from the Complainant. In response, the Respondent claims, first, that “shaze” is the transliteration of a dictionary term in Japanese meaning “company policy”, “refusal”, and “plantain”. However, even if so, that hardly renders it a common generic term in the English language. The Respondent also claims, partly supported by evidence, that the term “shaze” is in use by many other entities around the world, apart from the Complainant, including as the name of a hip-hop artist, a type of beach chair, and the trading name for a medical group. While the Respondent has put forward these various arguments as to why the term “shaze” should not be treated as unique to the Complainant, the Respondent does not discuss these in the context of its specific reason for selecting the disputed domain name in 2002, which it nowhere explains. Was the Respondent motivated by any of the meanings of the Japanese term? This seems unlikely, not least because, as the Complainant observes, there is no evidence that the Respondent has ever used the disputed domain name in accordance with those meanings. Or did the Respondent choose the disputed domain name because it reflected a made-up word in use as a name by many entities? Or was there another reason? The Panel notes that the Respondent has not provided any evidence showing that the disputed domain name falls within any particular legitimate pattern of other domain names owned by the Respondent. On the contrary, the Complainant has drawn attention to Vincle Internacional de Tecnologia y istemas, S.A. v. Warren Weitzman, Caramba LLC,WIPO Case No. D2018-1182, in which the Respondent was found to have registered and used another domain name, In that case, the panel rejected the Respondent’s assertion that “vincle” was the correct Spanish version of the term “link” and observed that the Respondent had provided no evidence in support of its claim that third parties used the term “vincle” as a trade mark. The panel also stated that the Respondent, as a domain name professional, should have carried out a search which would have alerted it to the complainant’s prior registered trade marks. However, the position in this case differs to some extent in that the Respondent has provided some evidence of third party use of the term “shaze”. Also, even if it were incumbent on the Respondent to carry out a search at the time of registration (as to which the Panel makes no finding), there would not have been much for the Respondent to discover as the Complainant had not yet filed its first application for a registered trade mark and, as discussed above, there was little evidence of the Complainant’s use of the mark at that time. Also in the Respondent’s favour is the fact that the Complainant has not claimed that the Respondent has ever used the disputed domain name in any way referable to the Complainant’s industry, namely jewellery. The Complainant relies heavily on the fact that the Respondent is in the business of offering domain names, including the disputed domain name, for sale, which practice it describes as illegitimate. However, simply registering a domain name for resale does not constitute bad faith. That is only likely to arise where the disputed domain name was registered for the primary purpose of sale to a trade mark owner or its competitor – see section 3.1.1 of WIPO Overview 3.0. To succeed on the point, the Complainant would still need to establish that the Respondent was likely to have been aware of the Complainant’s use of the term “Shaze” as at the date of registration of the disputed domain name in 2002 – i.e., the issue discussed in detail above. In conclusion, for the reasons explained above, the Panel has not found the arguments put forward by either party to be particularly convincing and considers this to be marginal case. However, having carefully weighed up the evidence, the Panel has decided that the Complainant has narrowly failed to prove its case on the balance of probabilities. Notwithstanding the flaws in the Respondent’s position explained above, there is minimal evidence of the Complainant’s use of term “shaze” by the time of registration of the disputed domain name in 2002 and on balance the Complainant has failed to otherwise satisfy the Panel that, in the circumstances of this case, the Respondent was likely to have acquired the disputed domain name with the Complainant in mind. The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy. F. Reverse Domain Name Hijacking (“RDNH”) 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 Reverse Domain Name Hijacking or was brought primarily 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”. RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The gist of the Respondent’s claim for RDNH is that the Complainant knew that there was no “plausible basis” for its Complaint. However, while some of the Complainant’s contentions were misconceived, for example in relation to the alleged illegitimacy of domain name trading, the Panel has the impression that the Complainant genuinely believed that there was a reasonable basis for its Complaint. The Panel therefore declines to find that the Complainant has been guilty of RDNH. 7. Decision For the foregoing reasons, the Complaint is denied. Adam Taylor
Sole Panelist
Date: March 27, 2020
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