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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Shahnaz Husain v. Saxena Dinesh O.

Case No. D2006-1132

 

1. The Parties

The Complainant is Shahnaz Husain, of New Delhi, India, represented by Anand & Anand, India.

The Respondent is Saxena Dinesh O., of WoodmereNew York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <shahnazhusain.com> (hereinafter “Domain Name”) is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2006. On September 6, 2006, the Center transmitted by email to Network Solutions a request for registrar verification in connection with the Domain Name. On September 11, 2006, Network Solutions transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2006.

The Center appointed Anna Carabelli as the sole panelist in this matter on October 12, 2006. 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 October 21, 2006, the Respondent sent directly to the Panel (and the Center) an e-mail message stating his reason for registering and desiring to hold on to the Domain Name.

By e-mail of October 23, 2006, the appointed Case Manager called upon compliance with Paragraph 8 of the Rules, reminding the parties that they may not engage in unilateral and direct communication with the Panel.

The Respondent’s e-mail message was sent after expiration of the response filing term, provided for by Paragraph 5(a) of the Rules, does not state or prove any exceptional circumstances for such a late filing and in any case does not reply to the Complainant’s allegations nor submit any supporting documents/evidence. The Panel, according to Paragraph 10 and 14 of the Rules, will disregard it.

 

4. Factual Background

The Complainant has provided evidence of trademark registrations in the Government of India Trade Marks Registry (Exhibits D, E) as well as in the U.K. Patent Office and U.S. Patent and Trademark Office (Exhibit F), of the following marks (hereinafter also “shahnaz marks”), respectively:

1) Indian Trademark Registrations:

T.M./S.M.	Reg. No.	Registration Date
SHAHNAZ HUSAIN	478419	September 14, 1987
SHAHNAZ	632479	June 30, 1994
SHAHNAZ	632478	June 30, 1994

2) U.K. Trademark Registrations:

T.M./S.M.	Reg. No.	Registration Date
SHAHNAZ HERBALS	1530388	August 16, 1996
SHAHNAZ HUSAIN HIMALAYAN HERB	2041570	February 28, 1997
SHAHNAZ AYURVEDICS	1541137	November 10, 1995

3) Community Trade Mark Registration:

T.M./S.M.	Reg. No.	Registration Date
SHAHNAZ HERBALS (in stylized form)	E837120	March 8, 1999

4) U.S. Trademark Registrations:

T.M./S.M.	Reg. No.	Issuance Date
SHAHNAZ HERBALS (in stylized form)	1881755	March 7, 1995
SHAHNAZ AYURVEDICS	1862186	November 11, 1994

The Complainant operates the web site under the domain names <shahnaz.in> and <shahnaz-husain.com> (Exhibit G, H) and has also registered the following domain names: <shahnazherbal.in> and <shahnazhusain.in>.

The Respondent registered the Domain Name <shahnazhusain.com> on May 20, 1999.

The Domain Name is used by the Respondent as a referring portal with “Sponsored links” and “Related Categories” which lead to websites which are either referring portals as well as offerring for sale Complainant’s direct competitors’ products.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Complainant holds several trademark registrations in various countries and her name has acquired common-law trademark status;

- the Domain Name is identical to the Complainant’s “SHAHNAZ HUSAIN” trade mark and to Complainant’s name; and, is partly identical and confusingly similar to the “SHAHNAZ” registered trademark;

- the Respondent has no right or legitimate interest in the Domain Name, given (i) the identity with the Complainant’s name and well-known registered trademarks; and (ii) the domain parking use of the Domain Name, which does not constitute a legitimate non commercial or fair use thereof or any use in connection with a bona fide offering of goods and services;

- the Domain Name was registered in bad faith as the Respondent could not have been possibly unaware of the Complainant’s trademark rights, given the identity of the Domain Name with the Complainant’s registered trademarks;

- the Domain Name is being used to deceivingly attract, relying on the Complainant’s world wide fame, and redirect Internet users to third parties’ sites (some of which offer online sale of products belonging to Complainant’s direct competitors’) for commercial gain deriving from collection of click-through fees.

B. Respondent

The Respondent did not file a response within the 20 days filing term provided for by Paragraph 5(a) of the Rules.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the various “SHAHNAZ MARKS” listed in paragraph 4. above, by submitting several trademark registrations. While more relevant under the second and the third elements, the Panel notes that the Complainant’s trademark registrations occurred prior to the Respondent’s registration of the Domain Name.

Moreover, the Panel agrees that the Complainant’s name has acquired over the years a common-law trademark status, as the Complainant has:

(i) become quite famous worldwide in the field of natural cosmetics, as shown by the numerous press cuttings submitted by the Complainant (Exhibit C) as evidence of the popularity achieved by the Complainant; (ii) the Complainant’s name has been commercially exploited since the seventies in connection with cosmetic products and services (see Exhibit C) (see Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068; R.E. ‘Ted’ Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251)

The Panel deems that the Domain Name is evidently identical to the Complainant’s trademark and name “shahnaz husain” as it incorporates and reproduces it in its entirety. Moreover, the Domain Name is confusingly similar to the “shahnaz” registered mark and all other Complainant’s registered trademarks, all of which incorporates the word “shahnaz”, which, in the Panel’s view evidently the distinctive part of the Complainant’s composite marks.

On this point, several Panel decisions have consistently held that, if a domain name incorporates a complainant’s mark in its entirety, the first element of the Policy is satisfied, notwithstanding the technical addition of “.com” as is not a distinguishing element (see among others Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; General Growth Properties, Inc. v. Mark Buzzell, WIPO Case No. D2005-1013).

In the light of the above, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name under Policy paragraph 4(c).

According to consistent line of WIPO UDRP decisions in such a case the burden of proof shifts to the Respondent to rebut the evidence. (See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). As a consequence, the Respondent’s failure to rebut the Complainant’s allegations allows the Panel to infer, taking into consideration the circumstances of this case, that the Respondent has no such rights or legitimate interests.

In addition, in line with consistent WIPO UDRP decisions, the Respondent’s use of the Domain Name to divert Internet users to his website and redirect them to other websites, some of which offer for sale the Complainant’s direct competitors products, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy. (See e.g.: Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142; Motorola, Inc. v. Mr. Josip Broz, WIPO Case No. D2002-1063).

Consequently, the Panel deems that the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As established in paragraph 6.A. above, the Domain Name is identical to the Complainant’s famous trademarks and name or distinctive part thereof.

In the circumstances of this case, it is unconceivable that the Respondent, at the time he registered the Domain Name, was not aware of the Complainant’s trademarks (see Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397). Based on the above, the Panel deems that the Respondent has registered the Domain Name in bad faith.

Moreover, the Domain Name is used as a referring portal to divert Internet users to third parties’ sites through “Sponsored Links” and “Related Categories”, some of which even offer for sale the Complainant’s direct competitors’ products. Furthermore, it is very likely that the Respondent’s purpose for such use, is that of collecting referral or click-through fees.

Both the above explained circumstances have been held by various WIPO UDRP decisions as clear evidence of bad faith use of a domain name (see Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

As a consequence, the Panel determines that the Complainant has established bad faith according to Paragraph 4(a)(iii) of the Policy.

 

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 name <shahnazhusain.com> be transferred to the Complainant.

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Anna Carabelli
Sole Panelist

Dated: October 26, 2006