The Complainant is Jashanmal National Company LLC, United Arab Emirates (“UAE”), internally represented.
The Respondent is Khaled Salem, UAE.
The disputed domain name <jashanmal.com> (the “Disputed Domain Name”) is registered with CloudFlare, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 5, 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 August 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 23, 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.
The Complainant is incorporated in Dubai, UAE.
The Complainant either directly or through associated group companies owns and operates department stores that trade under the name - “jashanmal” in shopping malls within the United Arab Emirates. Its predecessors opened the first “jashanmal” store in 1919. Jashanmal was the family name of the founder of the business. The Complainant’s retail operations span over 150 stores in the UAE, Kuwait, Bahrain, Oman, and India. Its distribution network extends to more than 1,000 outlets. A picture taken in 1956 of its Dubai store is displayed in the Dubai Museum as part of the cultural heritage of the history of Dubai. The Complainant’s business under the name “jashanmal” is registered in the territories of UAE, Bahrain, Kuwait and Oman for operating its business in these countries.
The Complainant is the owner of several domain names containing “jashanmal”, including <jashanmal.net> (since September 1999), <jashanmals.com> (since May 2001), <jashanmal.ae> (since March 2004), <jashanmalgroup.ae> (since December 2005), and <jashanmalgroup.com> (since June 2010). Websites promoting the Complainant’s business are linked to these domain names. The Complainant has received various awards for its business.
The Complainant owns a range of registered trademarks for the word JASHANMAL in UAE (for example registration No. 327160). These were all registered in 2020 and are referred to in this decision as the “JASHANMAL registered trademark”.
The Disputed Domain Name was registered on June 25, 2003. There is no evidence to show that it has ever resolved to an active website or been used in any other way.
Undated correspondence from the Respondent to the Complainant offered to sell the Disputed Domain Name to the Complainant for AED 150,000 (approx. USD 37,000). The Respondent said that it wanted the money to start a new ecommerce website linked to the domain name <emarat.com>. The Respondent said that it had been trying to approach the Complainant for “many years”.
The Complainant cites numerous previous UDRP decisions. The Panel does not think it necessary to repeat them here. The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is identical to the JASHANMAL registered trademark.
The Respondent has no rights or legitimate interests in the term JASHANMAL.
The Disputed Domain Name was registered and is being used in bad faith. The Complainant says the offer to sell the Disputed Domain Name (see above) clearly shows the Respondent acquired the Disputed Domain Name for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has rights in the JASHANMAL registered trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not generally affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
It does not matter for the purposes of this element that the Disputed Domain Name was registered before the JASHANMAL registered trademark existed - the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:
“1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed:
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP.” See below as to bad faith issues.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the JASHANMAL registered trademark. Although the JASHANMAL registered trademark post dates the registration of the Disputed Domain Name, it is clear the Complainant or its predecessors have been using the name JASHANMAL as their trading name since 1919 and are well-known within at least the UAE. In addition, while the term “jashanmal” corresponds to a family name (being the family name of the founder of the Complainant’s business), the Panel notes that it does not match the Respondent’s name. In the Panel’s view the Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
The date of registration of the Disputed Domain Name pre-dates the date of registration of the various JASHANMAL registered trademarks. However the Panel is satisfied the factual background (see above) establishes the Complainant has rights in the unregistered trademark JASHANMAL for the purpose of this proceeding. It has been used since 1919 by the Complainant and other companies within the Complainant’s group.
The Panel agrees with the approach in WIPO Overview 3.0 concerning this issue at paragraph 1.3:
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
While the term “jashanmal” corresponds to a family name, the Panel does not consider the term “jashanmal” to be descriptive and is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in that term. It is referred to below as the “JASHANMAL unregistered trademark”.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 online 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.
Absent any evidence from the Respondent to the contrary the Panel thinks it more likely than not that the Respondent would have been aware of the Complainant and the JASHANMAL unregistered trademark when it registered the Disputed Domain Name. The Panel infers that the Respondent acquired the Disputed Domain Name because it anticipated it would be of value to the Complainant. The Panel also infers that the undated correspondence offering to sell the Disputed Domain Name to the Complainant for AED 150,000 (see above) shows that the Respondent’s motivation was to sell the Disputed Domain Name to the Complainant.
The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <jashanmal.com> be transferred to the Complainant.
Nick J. Gardner
Date: October 13, 2020
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