The Complainant is Capital Distribution Consulting Inc., Canada, represented by Sunstein LLP, United States of America (“United States”).
The Respondent is Hiro Bharwani, Horizons Group (London) Ltd,1 United Kingdom, represented by Sanderana, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on September 7, 2021. The Complainant filed an amended Complaint on September 10, 2021.
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 September 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2021. The Response was filed with the Center on October 7, 2021. The Complainant made unsolicited supplemental filings on October 12, 2021 and October 21, 2021. The Respondent sent an email communication to the Center on November 2, 2021, advising that it intended to file a supplemental submission in the event that the Panel decided to admit the Complainant’s supplemental submissions.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 10, 2021. 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.
4. Factual BackgroundThe Complainant is the current registered proprietor of United States trademark registration number 5256759 for ROYAL DRAGON SUPERIOR VODKA 5X DISTILLED and device, originally registered on August 1, 2017, specifying vodka and vodka-based products in class 33.
The Respondent individual, Hiro Bharwani, is a director of the Respondent company Horizons Group (London) Limited (referred to below as “the Respondent”), which is the current registered proprietor of United Kingdom trademark registration number UK00002599069 for ROYAL DRAGON VODKA, originally registered on February 3, 2012, specifying vodka and vodka-based products in class 33.
The Parties acquired their respective trademark registrations by assignment. The original owner of both registrations was Dragon Spirits Limited (formerly known as “Golden Dragon Vodka Limited”), a Hong Kong, China corporation. Mr. Bharwani was formerly a shareholder of Dragon Spirits Limited.
Dragon Spirits Limited executed a purchase and sale agreement on June 27, 2019 in which it purported to assign the “ROYAL DRAGON VODKA mark and logo” to the Respondent. It appears that the validity of that agreement depends on (i) its compliance with a requirement of shareholder approval by special majority as set out in a Joint Venture Agreement signed by the shareholders of Dragon Spirits Limited on May 25, 2011, which governed the exploitation of the ROYAL DRAGON VODKA brand and transfers of intellectual property by the company; and (ii) a quantification of shareholdings of those shareholders who approved the agreement, taking into account orders made by the High Court of Hong Kong requiring certain shareholders to transfer their shares in the company to other named shareholders, one of whom was Mr. Bharwani.
Dragon Spirits Limited also executed a “deed of assignment of trade mark”, in which it purported to assign the ROYAL DRAGON VODKA mark to the Respondent on September 17, 2019. The validity of that deed is contested by the Complainant because it was executed (i) after the petition for the winding up of Dragon Spirits Limited was filed on July 12, 2019, and (ii) by two persons who allegedly were not directors of the assignor at the relevant time. The High Court of Hong Kong made an order to wind up Dragon Spirits Limited on September 23, 2019 and another order appointing liquidators on December 1, 2019.
One of the individuals who had been ordered by the court to transfer his shares in Dragon Spirits Limited successfully applied for recordal of a change in ownership of the United Kingdom trademark registration for ROYAL DRAGON VODKA on June 25, 2019, in favor of a company named Lilium Enterprises SA (“Lilium”). After the Respondent applied for rectification of the United Kingdom trademark register, the change of ownership in favor of Lilium was reversed on March 23, 2021. A change of ownership in favor of the Respondent was later recorded in the United Kingdom trademark register.
Meanwhile, an assignment of the United States trademark registration for ROYAL DRAGON SUPERIOR VODKA 5X DISTILLED and device was recorded in the United States trademark register on December 9, 2020 in favor of the Respondent. The liquidators of Dragon Spirits Limited sent cease-and-desist letters to the Respondent dated January 11, 2021 and March 1, 2021, demanding inter alia that the Respondent cease use of Dragon Spirits Limited’s intellectual property. The recordal of the assignment of the United States trademark registration was reversed on April 29, 2021.
Dragon Spirits Limited (in liquidation) executed an Asset Purchase Agreement dated May 7, 2021 in which it purported to transfer its intellectual property to the Complainant as part of the winding up of the company. The Respondent alleges, in effect, that that agreement is subject to the liquidated company’s prior assignment of its brand to the Respondent. Dragon Spirits Limited (in liquidation) and the Complainant executed another instrument on August 8 and 9, 2021, confirming that the Asset Purchase Agreement had assigned the United States trademark registration to the Complainant as of June 20, 2021. That assignment was recorded in the United States trademark register on August 8, 2021.
The disputed domain name was created on January 13, 2011 and the original registrant was Dragon Spirits Limited. The record of this proceeding does not indicate the date on which the disputed domain name was acquired by the Respondent but neither Party alleges that it was any earlier than 2019. The disputed domain name now resolves to a website operated by the Respondent that ostensibly offers Royal Dragon vodka for sale, although clicking on the “Shop Now” button opens a screen that merely displays the message “Down for maintenance”.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s ROYAL DRAGON SUPERIOR VODKA 5X DISTILLED and device mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent falsely alleges ownership of the ROYAL DRAGON SUPERIOR VODKA 5X DISTILLED and device mark pursuant to an assignment executed during the winding up of Dragon Spirits Limited. The alleged assignment contravened Hong Kong, China insolvency law because it was executed after the presentation of a petition to wind up Dragon Spirits Limited.
The disputed domain name was registered and is being used in bad faith. The Respondent had actual or constructive knowledge of the rights of the Complainant’s predecessor-in-title to the ROYAL DRAGON SUPERIOR VODKA 5X DISTILLED and device mark prior to its acquisition of the disputed domain name. The Respondent allegedly acquired the disputed domain name from Dragon Spirits Limited during the winding up of that company. It continued using the disputed domain name despite receiving letters from the liquidators of Dragon Spirits Limited. The Respondent is engaged in active commercial use of the disputed domain name to sell vodka, which is the Complainant’s core product.
B. RespondentThe Respondent denies the Complainant’s claims in their entirety. The Complainant has no intellectual property rights to the ROYAL DRAGON VODKA mark. The Complainant only claims to own the United States trademark registration but the recordal of the assignment of that registration to the Complainant is in the process of being contested by the Respondent. The recordal of a trademark assignment by the United States Patent and Trademark Office does not involve any analysis or decision on ownership.
The Respondent is the registered proprietor of the ROYAL DRAGON VODKA mark in the United Kingdom, Nigeria, Turkey, and Indonesia. It has also filed many applications for this mark globally. The Respondent has not acted in bad faith. The assignment of the marks and goodwill to the Respondent took place prior to the winding up of Dragon Spirits Limited.
6. Discussion and Findings A. Unsolicited Supplemental FilingsThe Complainant made an initial unsolicited supplemental filing on October 12, 2021 and a more detailed unsolicited supplemental filing on October 21, 2021. The Complainant requests that the Panel accept these filings in order to allow it to rebut factual allegations and claims made in the Response. It submits that it could not reasonably have known at the time of the amended Complaint that the Respondent would rely on the purchase and sale agreement dated June 27, 2019. It seeks to confirm that that agreement is invalid and to address claims that the Respondent is the rightful owner of relevant trademark registrations.
The Respondent advised the Center in its email communication of November 2, 2021 that it intended to file a supplemental submission in the event that the Panel decided to admit the Complainant’s unsolicited supplemental filings.
The Panel notes that the Complainant’s supplemental filings contain 15 annexes providing, among other things, a sale agreement, multiple court orders, share transfers, an affirmation in a winding up proceeding, legal correspondence in a proceeding for rectification of a share register, a trademark rectification filing and a notice of opposition to a trademark application. The supplemental filings do not appear to contain evidence regarding the registration or use of the disputed domain name. Accordingly, the supplemental filings would not alter the Panel’s findings below on the suitability of the Policy for this dispute; if anything, they confirm the basis of those findings. Therefore, the Panel has decided not to accept the Complainant’s supplemental filings and, consequently, there is no need to consider the Respondent’s request to file its own supplemental filing.
B. Suitability of the Policy for this DisputeThis is not an ordinary cybersquatting dispute. Rather, it primarily concerns competing claims to trademark registrations around the world based on the contested validity of multiple assignment agreements which, in turn, entail the interpretation and application of a shareholder agreement, a quantification of shareholdings, allegations of incapacity, and the application of insolvency law. Applications to rectify trademark registers on the basis of these competing claims have variously been granted or are pending in different jurisdictions. The disputed domain name is part of this much wider dispute. See Section 4 above.
The Panel recalls that the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive cybersquatting”. The UDRP is not an appropriate process to adjudicate a complex business dispute such as this because the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court to resolve such a dispute. See, for example, Symphony Holdings Limited v. Jaimie Fuller, Fuller Consultancy F.Z.E., WIPO Case No. D2019-2887.
Therefore, the Panel will not consider the merits of the Complaint, on the broad ground that this is a complex business dispute that exceeds the relatively limited scope of the UDRP. The dispute would be more appropriately addressed by a court of competent jurisdiction. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.14.6.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Sole Panelist
Date: November 24, 2021
1 The original Complaint was filed against a proxy service. The Complainant amended the Complaint, replacing the proxy service with the registrar-confirmed underlying registrant.