WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

STAS IP B.V. Private limited company v. Shades International Inc. / Juan Gil

Case No. D2020-2900

1. The Parties

The Complainant is STAS IP B.V. Private limited company, the Netherlands, represented by Jeroen Lavrijssen, United States of America (United States).

The Respondent is Shades International Inc., United States / Juan Gil, Italy, represented by Dmitriy Chyrkin, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <staspicturehanging.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2020. On November 3, 2020, 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 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 November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. Upon the Respondent’s request the due date for Response was extended to December 18, 2020, in the circumstances of this case. In the event, however, the Response was filed with the Center on December 8, 2020.

The Complainant submitted an unsolicited supplemental filing on December 18, 2020.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 25, 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.

On February 8, 2021, the Panel issued administrative panel order no.1 inviting the Complainant to address certain matters raised in the Response and to afford the Respondent an opportunity to respond. As a result:

(a) The Complainant submitted a supplemental filing on February 11, 2021; and
(b) The Respondent submitted a supplemental response on February 19, 2021.

On February 19, 2021, the Center received a further purported supplemental filing from the Complainant. Subsequently, on February 19, 2021, the Center received an unsolicited reply from the Respondent in response to the Complainant’s unsolicited supplemental filing.

4. Factual Background

The Complainant is a manufacturer of picture hanging systems and other items related to wall decoration. It was established in the Netherlands in 1995. It currently has two offices; one in the Netherlands and another in the United States. According to the Complaint, it distributes its products to 64 countries and has several patents relating to its products.

Amongst other things, the Complainant registered the domain name, <picturehangingsystems.com>, in July 1999. The Complainant also registered the domain name <stasgroup.com> in November 2006. The Complainant has also registered a number of other domain names on the dates listed below:

According to the Complaint, the first of these domain names, <picturehangingsystems.com>, is used as the website which is its official online store; the second, <stasgroup.com> resolves to a website which provides an international portal to the Complainant’s products and services.

The Complaint includes evidence that the Complainant has registered the following trademarks:

(a) United States Registered Trademark No. 4,184,858, STAS, in respect of metal picture hangers, lamps and plastic glass and wood picture hangers in International Classes 6, 11, and 20 and which was filed on October 20, 2011, and registered on August 7, 2012;

(b) United States Registered Trademark No. 6,131,905, STAS PICTURE HANGING SYSTEMS, in respect of metal picture hangers in International Class 6 and which was filed on September 23, 2019, and registered on August 18, 2020; and

(c) European Union Trademark (EUTM) No. 018186012, STAS PICTURE HANGING SYSTEMS, in respect of metal hanging and fixing devices and which was filed on January 21, 2020, and registered on May 27, 2020.

The Respondent registered the disputed domain name on November 8, 2007.

According to the Respondent, in January 2008, the Respondent Mr. Gil met with a Mr. Andre Stas and the director of sales from the Complainant in Las Vegas, United States.

According to the Respondent, he and Mr. Stas agreed to form what the Respondent describes as a partnership in which he would research distribution possibilities in the United States. Mr. Gil and his partners incorporated the corporate Respondent, Shades International, on January 10, 2008.¹

On October 1, 2009, the Complainant and another company associated with Mr. Gil, STAS Italia SRL, entered into an Authorised Exclusive Distributor Agreement. By this agreement, the Complainant appointed STAS Italia SRL as its exclusive distributor for Italy on a number of conditions. One of those conditions was that the distributor sold only products manufactured by the Complainant. Another was that it could not adopt, use or attempt to register any words or trademarks similar, or bearing any resemblance to a trademark or service mark owned or used by the Complainant without first obtaining the Complainant’s permission.

The Respondent began using the disputed domain name in 2013. From then until 2020, the Respondent operated as the, or a, distributor of the Complainant’s products in the United States. In doing so, according to the Response the Respondent operated under the fictitious business name “Stas Picture Hanging Systems”. During this period, the website to which the disputed domain name resolved offered only the Complainant’s branded products. Also during this period, the Respondent spent some USD 105,000 on advertising the Complainant’s products on Amazon and a further USD 12,000 or USD 23,000 on pay-per-click advertising.

At some point in 2020, the relationship by which the Respondent was distributing the Complainant’s products came to an end. The parties have not elaborated on how that came about or the causes. According to the Complaint, on October 6, 2020, the Complainant notified the Respondent it was not authorised to register or use the disputed domain name and made an offer of USD 2,000 for the registration.

In any event, since the Complainant stopped supplying products to the Respondent, the disputed domain name redirects to a website at <picturehangingsystemsdirect.com>. According to the Complainant (and the Respondent does not dispute this), the Respondent offers for sale and sells picture hanging systems from competing brands from this website. The Respondent does point out that it also sells the Complainant’s branded products from this website.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Supplemental Filings

Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.

Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.

In the present case, the Complainant’s first unsolicited supplemental filing seeks to advance a copy of the “cease and desist” letter dated December 18, 2020, to the Respondent draft by the Complainant’s legal counsel.

The letter was sent, therefore, after the Complaint was filed. While the “cease and desist” letter was not available to be included in the Complaint, the Panel does not consider it adds anything material to the dispute. Insofar as they relate to the issues in this administrative proceeding, the “cease and desist” letter makes essentially the same substantive allegations against the Respondent. In these circumstances, the Panel does not admit the proposed first supplemental filing.

It is also unnecessary to admit the Complainant’s second unsolicited supplemental filing. It either repeats matters already addressed in earlier filings or makes assertions seeking to characterise matters for which objective evidence is included in earlier filings. As a result it is also unnecessary to admit the Respondent’s unsolicited reply. In any event, all it does is reference Annex 3 to the Response and adds nothing new.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks for STAS and STAS PICTURE HANGING SYSTEMS identified in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, see e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.

Disregarding the “.com” generic Top-Level Domain (gTLD) as a functional aspect of the domain name system (WIPO Overview 3.0, section 1.11), the disputed domain name consists of the Complainant’s first registered trademark and the term “picture hanging systems”. The addition of terms such as these to the Complainant’s first registered trademark does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Moreover, the disputed domain name (apart from the gTLD) is identical to the Complainant’s second and third registered trademarks.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

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

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. WIPO Overview 3.0, section 2.1.

The Complainant states that it did not and does not authorise the Respondent to register or use the disputed domain name. Nor is the Respondent affiliated with it. The Complainant further contends that, as the Respondent has no rights or agreements to distribute or market the STAS brand products, the Respondent has no right or legitimate interest in the disputed domain name.

The Respondent does not dispute it is no longer authorised or affiliated with the Complainant. The Respondent contends, however, that it has been using the disputed domain name “long before” the Complainant registered its trademarks and has made significant efforts to promote the disputed domain name. It says therefore it is commonly known as Stas Picture Hanging Systems in the United States including through registration and use of the fictitious business name.

The Panel also notes that the Respondent claims that the word “Stas” is a dictionary word in wide use; commonly as variation on “Stanislav” but also as an acronym for numerous phrases such as St Thomas Aquinas Seminary, Space Transportation Architecture Studies, Submarine Towed Away System, Southwest Texas Aerostat System, and many others.

The Respondent’s claim that it began using the disputed domain name before the Complainant’s registered its trademark is factually incorrect. The Complainant’s United States Registered Trademark No. 4,184,858 for STAS was registered on August 7, 2012, before the Respondent states it started using the disputed domain name in 2013.

The Respondent did register the disputed domain name before the Complainant registered the first of its trademarks in the United States. In its supplemental response, the Respondent points out this was well before the Complainant registered its trademark in the United States and so the Respondent did not require the Complainant’s permission. However, it is clear that the Complainant had been using the name long before the registration of the disputed domain name in November 2007. It is also clear that, when the Respondent registered the disputed domain name, the Respondent Mr. Gil fully appreciated its significance as the Complainant’s trademark or brand name.

First, the Panel does not accept the justification based on the descriptiveness or wide range of alternative meanings put forward by the Respondent for the expression “Stas”. Apart from anything else, the Respondent has not used and is not using the disputed domain name in any way associated with those descriptive or alternative meanings. There is no suggestion that the Respondent Mr. Gil is, or was when the disputed domain name was registered, known as “Stas” or “Stanislav”. “Stas” is part of the corporate Respondent’s fictitious business name, but the Respondent registered that name only in December 2013 and started using it in January 2014 and even then only with regard to the Complainant’s products.

In addition to the element “stas”, the disputed domain name includes the words “picture” and “hanging”. Sofar as the record in this proceeding shows, these three elements have significance in combination because they are the trademark or brand of the Complainant’s products. To the extent that the Respondent has built up recognition in the United States as “Stas Picture Hanging Systems”, its fictitious business name, that has been done as the distributor of the Complainant’s products. Accordingly, it is clear that the Respondent registered the disputed domain name with knowledge of its significance as the Complainant’s trademark.

The Panel would be very reticent to accept that registration in such circumstances confers a right or entitlement under the Policy. The “good faith” or otherwise of such conduct is better assessed under the rubric of the third requirement – whether the disputed domain name was registered in bad faith. This is addressed in section 5D below.

In these circumstances, the Respondent’s continued use of the disputed domain name, which is confusingly similar to the Complainant’s first registered trademark, without the Complainant’s permission, to offer for sale products which compete with the Complainant’s products does not qualify as a good faith offering of goods under the Policy. On its face, such conduct appears to be inconsistent with the Complainant’s registered trademark.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

As noted above, the Respondent registered the disputed domain name in November 2007. That is some 12 years after the Complainant began operations under the name and trademark.

The Respondent also registered the disputed domain name more than a month before the January 2008 meeting in Las Vegas with the Complainant’s representatives where the Respondent claims a partnership was established. The Complainant denies any such partnership was formed then. The Respondent has not submitted any documents to verify the formation of any partnership at that time.

On the other hand, the Complainant has provided a copy of the October 2009 distributorship agreement with Mr. Gil’s Italian company. That agreement does not on its face give the Respondent rights in the United States. Further, the Respondent does not claim to have begun using the disputed domain name until 2013 or 2014, some six or seven years later. And that use was solely in relation to the market in the United States or North America, wholly unrelated to Italy.

The timing of the registration more than one month before the meeting in Las Vegas suggests the Respondent registered the disputed domain name knowing of the Complainant but without the Complainant’s knowledge or consent. The Respondent has not claimed otherwise.

Registration of a domain name confusingly similar to another’s trademark with awareness of those rights but without consent would typically indicate that the disputed domain name was registered in bad faith under the terms of the Policy.

In the present case, however, the Respondent was in fact operating as the Complainant’s distributor, or one of them, in the United States for a number of years from 2014 to 2020.

The Respondent says that during that period it dealt with the Complainant as “STAS USA” and using the disputed domain name. In support of this, the Respondent has submitted a bundle of emails, largely from the period March - April 2015 and August - December 2015. These are mostly with the Complainant’s “International Sales” employee and deal with placement of orders and requests for pricing and the like. One of the first emails in the chain dated December 1, 2014, appears to be from the Respondent’s employee using the email address for “administrazione shades” using an email address from “shadesdirect.eu”. It was blind copied to email addresses using the disputed domain name.

On the other hand, the Complainant contends that it repeatedly demanded that the Respondent stop using the disputed domain name and the Respondent agreed to do this, but did not honour the agreement.

According to the Complainant:

- In 2014 and 2015, the Complainant requested the Respondent to stop the misuse of the disputed domain name via multiple phone calls between the Respondent and the Complainant;

- In July 2016, the Complainant had an in-person meeting with the Respondent at the Netherlands Headquarters of the Complainant regarding the misuse of the Complainant’s trademark and brand in the United States, which the Complainant says was causing severe confusion in the marketplace;

- In September 2016, the Complainant requested the Respondent again to stop using the disputed domain name, as the Respondent was portraying himself as the Complainant;

- The Complainant reached out several times by telephone in 2016 and 2017 to resolve the issue regarding the disputed domain name;

- On September 26, 2017, the Complainant again reminded the Respondent by email that he has agreed to stop misusing the disputed domain name;

- On October 4, 2017, the Complainant again reminded the Respondent of his misuse of the disputed domain;

- On April 16, 2018 the Complainant again sent a reminder to the Respondent regarding the disputed domain name; and

- At the end of 2020, the Complainant made an offer to purchase the disputed domain from the Respondent in an effort to settle the matter amicably. The Respondent never responded to the request.

The Complainant has submitted two email communications with the Respondent in 2017 and 2018 consistent with these claims. The emails do not support the claim that the Complainant had authorised the Respondent to register and use the disputed domain name or had acquiesced in the Respondent’s conduct. On the contrary, in the email chain in September and October 2017, the Respondent appears to acknowledge an agreement to “fade out” use of “STAS picture hanging” and revert to “Shades Picture Hanging Systems”. Also, in the email in April 2018, the Complainant claims the arrangement with the Respondent in the United States was different to the arrangement with the “Respondent” in Italy. It claims that, in Italy, the Respondent was appointed as the exclusive distributor and given permission to use the domain name <stasitalia.it> and operate a webshop from <shop.stasitalia.it>. In contrast, the email claims there was no such agreement with the Respondent for the United States which had been appointed only to enter “the project market” and not to sell directly only.

The Panel is conscious that the emails in 2017 and 2018 on this issue are some time after the Respondent actually started using the disputed domain name in around the start of 2014. On the other hand, the Respondent has not provided any evidence to support the claim that a partnership in the United States was created in January 2008. Nor does there appear any reason why, if such a partnership had been created, it did not commence operating to sell product until early in 2014, some five or six years later. Furthermore, the Respondent does not contest the content of the emails from 2017 and 2018 which apparently record the Respondent’s agreement to stop using the name “STAS Picture Hanging Systems” and transition to <shadespicturehang.com>.

In these circumstances, therefore, the Panel finds that the disputed domain name was registered without the Complainant’s permission to take advantage of its resemblance to the Complainant’s trademark. Accordingly, the Panel finds the disputed domain name was registered in bad faith. The Panel does not find on the materials in this administrative proceeding that the delay, such as it is, in the Complainant bringing this Complaint is such as to disentitle it from succeeding in this Complaint. See e.g., WIPO Overview 3.0, section 4.17.

As discussed in section 5.C above, the way the Respondent is using the disputed domain name now constitutes use in bad faith under the Policy.

Accordingly, the Complainant has established the third requirement under the Policy and so has established all three requirements under the Policy.

7. Decision

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, <staspicturehanging.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: February 23, 2021

¹ Except to the extent (if any) that it is necessary to distinguish between them, the Panel will simply refer to the Respondent.