The UDRP against the domain Reza.com ended with the Complainant’s loss; the three member panel at the WIPO also found them guilty of engaging in Reverse Domain Name Hijacking.
The Respondent replied to the Complainant’s allegations, stating that “Reza” is a popular name and surname in Saudi Arabia and that his surname, Alireza, is a combination of the names “Ali” and “Reza”, written as the two words “Ali” and “Reza” in native Arabic.
The Respondent informed the WIPO Panel that the disputed domain name corresponds, quite literally, to the Respondent’s last name, and that of his family, which is allegedly among the leading families of the Kingdom of Saudi Arabia.
The Respondent was represented by IP attorney, John Berryhill.
ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Reza IP Holdings LLC v. Taha Alireza, Velvet Case No. D2022-0945
The Parties
The Complainant is Reza IP Holdings LLC, United States of America (“United States”), represented by Dennemeyer & Associates S.A., Luxembourg.
The Respondent is Taha Alireza, Velvet, United Kingdom, represented by John Berryhill, Ph.D., Esq., United States.
The Domain Name and Registrar
The disputed domain name reza.com is registered with Tucows Inc. (the “Registrar”).
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2022. On March 17, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2022, 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 March 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2022, which was extended to April 15, 2022. The Response was filed with the Center April 14, 2022. The Complainant submitted a supplemental filing on April 22, 2022.
The Center appointed Luca Barbero, Emmanuelle Ragot, and Richard G. Lyon as panelists in this matter on May 9, 2022. The Panel finds that it was properly constituted. Each member of 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.
Factual Background
The Complainant is a United States company active in the jewelry industry. The Complainant’s Chief Executive Officer (“CEO”) is Olivier Reza, son of Alexandre Reza, a Paris-based fine jewelry designer who founded his eponymous jewelry house in 1981 on the Place Vendôme in Paris, establishing retail presence in also in Geneva, Cannes, and Monaco to offer fine jewelry, suites of necklaces, bracelets, earrings, rings, made from rare diamonds, emeralds, rubies, and sapphires.
Alexandre Reza’s work has been featured in books such as “Alexandre Reza: Dreams of Yesterday, Realities of Today” (1985) and “Alexandre Reza: Stones of Light” (1991). As part of the Ultimate Collection, Assouline published a monumental edition in 2012 entitled “Alexandre Reza, presenting more than one hundred rare pieces of Reza’s creations, and a history of the famed gem house in archival documents and vintage photography”. In June 1988, Alexandre Reza’s private collection of fine jewelry and gems was showcased at the Cooper Hewitt Museum in New York.
The Complainant is the owner of trademark registrations for ALEXANDRE REZA and REZA, including the following, as per excerpts from the relevant online trademark databases submitted as annexes 6 through 8 to the Complaint:
France trademark registration No. 1247774 for ALEXANDRE REZA (word mark), filed and registered on October 11, 1983, in classes 3, 14, 18 and 20;
International trademark registration No. 482351 for ALEXANDRE REZA (word mark), registered on January 23, 1984, in classes 3, 14 and 18;
European Union trademark registration No. 016006322 for REZA (word mark), filed on November 7, 2016 and registered on March 9, 2017, in classes 14 and 35.
The Complainant is also the owner of the domain name alexandrereza.com, registered on May 31, 2001, and worldofreza.com, registered on May 4, 2020, both pointed to the website “www.alexandrereza.com”, used by the Complainant to promote its jewelry products.
The Respondent, Taha Alireza, is a subject of the Kingdom of Saudi Arabia living in London, England. His is a prominent Saudi family (see section 5.B below), and for years he has been involved with the family businesses, which include several companies that use the family name Reza in their name. The Respondent has never been engaged in the jewelry business.
Upon receipt of the Complaint, the Respondent, through counsel (the same counsel who represents him in this proceeding), wrote to the Complainant’s counsel (the same counsel who represents the Complainant in this proceeding). In this email letter, the Respondent’s counsel informed the Complainant of a pending sale of the disputed domain name to Reza Investment Company and outlined in summary form why the Complaint would fail. The Respondent’s counsel requested withdrawal of the Complaint, the pendency of which was delaying consummation of the transfer. The Complainant’s counsel replied promptly, indicating the Complainant’s refusal to withdraw the Complaint. Further communications failed to resolve the matter.
The disputed domain name reza.com was first registered on June 2, 1997, and is pointed to a website where it is indicated that the disputed domain name is for sale.
Parties’ Contentions
Complainant
The Complainant contends that disputed domain name reza.com is identical to the trademark REZA in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain “.com”. The Complainant also states that the disputed domain name is confusingly similar to its trademark ALEXANDRE REZA as it includes the second part of the said trademarks, i.e. the term “reza”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not a licensee of the Complainant and has in no way been authorized or permitted by the Complainant to use its trademark in the disputed domain name or otherwise.
The Complainant claims that the Respondent has no legitimate right to the name “REZA” and is not making a legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name has never been used since its registration in the 1990s. The Complainant states that the disputed domain name was first reported to the Complainant in 2019 and that, at that time, it was not redirecting to any active webpage. Then, at the beginning of 2020, when the Complainant started manifesting interest in the disputed domain name, namely by contacting the Registrar to seek the registrant’s contact details, some changes were made and the disputed domain name now appears to be offered for sale on the webpage to which the disputed domain name resolves.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed domain name is highly similar to its trademark and identical to the last name of the Complainant’s CEO, giving the impression that the website to which the disputed domain name resolves, may be somewhat connected to the Complainant.
The Complainant claims that, considering its worldwide reputation, the Respondent must have had knowledge of the Complainant’s rights when it registered the disputed domain name and putted it up for sale.
The Complainant informs the Panel that, upon being notified of the disputed domain name, the Complainant tried to resolve the matter amicably offering to buy the disputed domain name for USD 15,000, an offer that was declined by the Respondent, who requested USD 250,000 to hand over the disputed domain name, which clearly shows the Respondent’s intent to use the disputed domain name for commercial gain.
Moreover, the Complainant highlights that, according to internal searches carried out by the Complainant, the Respondent apparently owns a portfolio of 151 domain names most of which resolve to parking pages offering for sale the domain name, which would be a further indication of bad faith.
The Complainant also claims that paragraph 4(b) of the Policy is applicable in this case since the Respondent proposed to sell the disputed domain name for a considerable amount, far more than its out-of- pocket expenses of registration and maintenance.
Respondent
The Respondent replied to the Complainant’s allegations, stating that “Reza” is a popular name and surname in Saudi Arabia and that his surname, Alireza, is a combination of the names “Ali” and “Reza”, written as the two words “Ali” and “Reza” in native Arabic.
The Respondent informs the Panel that the disputed domain name corresponds, quite literally, to the Respondent’s last name, and that of his family, which is allegedly among the leading families of the Kingdom of Saudi Arabia.
Moreover, the Respondent points out that the disputed domain name refers to the name used by a commercial conglomerate owned by the Respondent’s family, i.e. the company Reza Investment Co. Ltd (“the Reza Investment Company”), operating the website “www.rezagroup.com” and headquartered in the Alireza Tower in Jeddah, Saudi Arabia, to whom the disputed domain name has been sold prior to this proceeding. The Respondent thus states that, but for this proceeding, the disputed domain name would have been transferred to the Reza Investment Company pursuant to that sale.
The Respondent alleges that the Complainant is expressly aware of the foregoing facts and has deliberately decided to maintain this proceeding in order to interfere with the contractual expectations of the Respondent and the Reza Investment Company.
The Respondent claims the disputed domain name is not confusingly similar to the Complainant’s trademark ALEXANDER REZA, considering Alexander Reza identifies a particular person and not “Reza” alone and goes on to underline that the Complainant presents no evidence of rights in a trademark REZA prior to its European Union trademark registration No. 16006322, filed in 2016.
Moreover, the Respondent further states that, while the first criterion does not depend on seniority, the Respondent’s registration of the disputed domain name is quite senior to any claim of right in “REZA” shown by the Complainant. The Respondent highlights that, in fact, his company Velvet Ltd was the registrant of the disputed domain name as early as February 2006 (as shown in the Historical WhoIs records submitted as Annex 1 to the Response), and remains the identified organization at the same address, since the Respondent is the sole director of Velvet Ltd, as well as of a related company, Velvet Enterprises Ltd., an internet development and media venture which the Respondent has operated since 1999.
With reference to rights or legitimate interests in respect of the disputed domain name, the Respondent states that, with regards to his family’s use of the name Reza, considering the Respondent’s grandfather Mohammed Alireza was the former Saudi Finance Minister and Ambassador to France from 1972 to 1976 (Annex D to the Response), his brother, the Respondent’s great uncle, served as the Saudi Ambassador to the United States from 1975 to 1979 and that the Respondent’s father, Youssef, is a founder, director and shareholder of the family enterprise the Reza Investment Company, there is no doubt that the Respondent has rights and legitimate interests in the disputed domain name.
The Respondent states that the Reza Investment Company is the Respondent’s family’s asset holding vehicle of which the Respondent’s first cousins are the CEO and general manager. Such company holds interests in a diversified group of companies in several industry sectors, including in the food, chemical, hygiene, and energy industries.
The Respondent further explains that, considering he had no particular need to develop a website about himself, and in the extremely unlikely event someone may have an attractive offer, it maintained the disputed domain name pointed to a template providing his contact details. The Respondent contends that it has a legitimate interest under the Policy to register his own surname, in various forms, as a domain name and claims that what the Respondent chooses to do with such domain name, absent targeting the Complainant’s trademark for jewelry, is entirely up to him.
In addition, the Respondent highlights that in no case has he ever intended to corner the Complainant’s market by registering the disputed domain name or to cause any voluntary interference with the Complainant’s jewelry business and that the name Reza is simply an extremely common name and surname.
The Respondent also informs the Panel that the Reza Investment Company is the owner of trademarks consisting of, or comprising REZA, including the following (as per Annex H to the Response):
Jordan trademark registration No. JOT190950 for REZA (figurative mark), filed on February 14, 2011, and registered on June 11, 2011, in international class 5;
Jordan trademark registration No. JOT190951 for REZA (figurative mark), filed on February 14, 2011, and registered on June 11, 2011, in international class 3.
Based on such trademark registrations, the Respondent points out that his family’s trademark rights in “REZA” are decades senior to the Complainant and underlines that, as shown in the European Union Intellectual Property Office (EUIPO) database and TMVIEW database, there are numerous pending and registered trademarks in which the textual component consists solely of “REZA” belonging to a variety of
parties apart from either the Complainant or the Respondent’s family (as per Annex E to the Response).
With reference to the circumstances evidencing bad faith, the Complainant indicates that, despite having the disputed domain name for nearly 20 years, the Respondent has never used it for any purpose relating to jewelry or the Complainant’s trademark.
The Respondent has not sold or advertised any of the Complainant’s or a competitor’s products, nor has the Respondent ever approached the Complainant to sell the disputed domain name, or ever engaged in any conversation about the disputed domain name with any person who identified themselves as having any relationship to the Complainant.
The Respondent further contends that the Complainant’s contention regarding the Respondent’s “primary purpose” in having registered the disputed domain name in 2006, to sell it to the Complainant is unfounded, since the Complainant proffers an email conversation in 2020 with a person called “Mahsn Rezanyi”, whose email address is “[…]@gmail.com” and offering USD 15,000. The Respondent concludes that, considering the person in question does not seem to have any connection to the Complainant, the allegation of bad faith cannot be held as valid.
With regard to the Complainant’s assertion that the Respondent has engaged in a pattern of domain name registrations with the aim of selling the domain names in bad faith for amounts well in excess of the documented out-of-pockets costs, the Respondent does not deny that he registered a number of surname domain names and three character domain names and that he offered them for sale, but points out that the Complainant has failed to substantiate any allegation of improper conduct, nor did it ever state that any of the registered domain names in the list may contain trademarks belonging to someone or identify an instance in which the Respondent was found to have acted in bad faith.
Lastly, the Respondent refers to his counsel’s letter to the Complainant’s counsel, in which the Complainant was informed of all the foregoing facts and contentions. The Respondent emphasizes that the Complainant was made aware of the operative facts, as the Respondent had in fact informed the Complainant in an informal communication, that his surname was “Ali Reza” and that he is a member of the well-known Alireza family which operates the Reza Investment Company. The Respondent also states that the Complainant requested proof of the fact that the disputed domain name had been sold to the Reza Investment Company, which the Respondent promptly provided, but nevertheless, decided to carry on with the present proceeding, knowing well that it would have caused major delays to the transfer of the disputed domain name to the Reza Investment Company.
Complainant’s Supplemental Filing
In its Supplemental Filing, the Complainant points out that it did not intend to interfere with possible contractual relationships between the Respondent and the Reza Investment Company.
Specifically, the Complainant states that the searches conducted on the Respondent before the filing of the Complaint did not reveal any connection with the Reza Investment Company, as also the public WhoIs records at the time of the filing of the Complaint showed the disputed domain name was registered in the name of Taha Alireza from the organization Velvet.
With regards to the new argument of the Respondent regarding the Alireza’s family and the Reza Investment Company, the Complainant states that the Respondent is trying to take advantage from the alleged connection with the family Alireza from Saudi Arabia, but that apparently, it results from the Response that the disputed domain name was actually registered and maintained with the sole purpose of selling it to an interested third party, such as the Reza Investment Company.
The Complainant also asserts that the possible discussion about the transfer of the disputed domain name to Reza Investment Company occurred because of the initial contacts from the Complainant, which tried to purchase the disputed domain name by negotiating a fair price. The Complainant claims that, as a result of
such contacts, the Respondent finally realized that the disputed domain name was popular and that it could speculate over this domain name.
Moreover, the Complainant contends that the Respondent was completely aware that, by registering this domain name, it would have obtained offers from the Reza Investment Company or from the Complainant and submits that, therefore, the Respondent registered the disputed domain name with the intention of selling it to the Complainant or apparently to the Reza Investment Company, for valuable consideration in excess of his out-of-pocket expenses directly related to the disputed domain name.
Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
that the disputed domain name has been registered and is being used in bad faith.
Supplemental Filing
Before entering into the merits of the case, the Panel addresses the issue of the unsolicited supplemental filing submitted by the Complainant to the Center.
No provision concerning supplemental filings are made in the Rules or Supplemental Rules, except at the request of the panel according to paragraph 12 of the Rules, which states the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case.
According to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality, and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged – unless specifically requested by the panel – and 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.
Accordingly, UDRP panels generally accept supplemental filings only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated. See, along these lines, Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., WIPO Case No. D2017-0481.
In the case at hand, the Panel notes that the Complainant’s Supplemental Filing includes comments as to the Respondent’s alleged relationship with the Reza Investment Company and with the Alireza family from Saudi Arabia. The Panel finds that there is no reason why the Complainant should have known of the claimed relationships and, in particular, of the pending sale of the disputed domain name to the Reza Investment Company prior to filing the Complaint. Therefore, the Panel has decided to admit this part of the filing (see section 5C above).
The Complainant also provides comments on the Respondent’s assertions as to the Complainant’s alleged ownership of prior rights in the trademarks ALEXANDRE REZA and REZA and reiterates that the Respondent also owns other domain names which correspond to popular personal names and surnames, as already pointed out in the Complaint. Since these parts of the Complainant’s Supplemental Filing do not relate to new circumstances that could not have been known or anticipated at the time of the filing of the Complaint, the Panel has decided not to admit them.
The Panel anyway finds that nothing in the Complainant’s Supplemental Filing will alter the Panelists’ views on the merits of the case.
Substantive Issues
Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark REZA based on the European Union trademark registration No. 016006322 for REZA (word mark) cited under section 4 above.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview 3.0).
In the case at hand, the Complainant’s trademark REZA is entirely reproduced in the disputed domain name, with the mere addition of the Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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
you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
you are 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.”
In the case at hand, the Complainant stated that the Complainant did not authorize the Respondent to use the Complainant’s trademark and – mistakenly – that the Respondent has not been commonly known by the name “Reza”, which corresponds to the surname of the Complainant’s CEO and its trademark. The Complainant also submitted that the Respondent has not been using the disputed domain name in connection with a legitimate noncommercial or fair use as it has not used the disputed domain name for several years and only as of 2020, after the Complainant sent a data disclosure request to the concerned Registrar, the Respondent made some changes in the use of the disputed domain name, which is currently pointed to a webpage where reza.com is offered for sale.
The Respondent has rebutted the Complainant’s contentions, stating that the term REZA reflected in the disputed domain name corresponds to his surname Ali Reza as well as to the surname of its family and to a popular name and surname in Saudi Arabia. The Respondent also stated that REZA is used by the Reza Investment Company (owned by the Respondent’s family), as name and trademark, with trademark registrations as of 2011. The Respondent further indicated that it sold the disputed domain name to the Reza Investment Company prior to the start of this proceeding, although the change of ownership has not yet been reflected in the public WhoIs records.
Based on the documents submitted by the Respondent to substantiate its allegations, including a copy of the Respondent’s passport and of its company information – showing that Taha Alireza is Director of Velvet LTD-, the majority of the Panel finds that the Respondent has a legitimate interest in the disputed domain name in view of the correspondence of the same with his surname. The majority of the Panel also appreciates that Reza is a popular surname in Arabic and Persian-speaking countries and, as also shown by online searches, is not a term exclusively referable to the Complainant. Therefore, and in absence of any convincing evidence that the Respondent intended to specifically target the Complainant, the majority of the Panel finds that the Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name in accordance with Paragraph 4(a)(ii) of the Policy.
One of the Panelists, instead, finds that the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy in view of the correspondence of the disputed domain name with the Complainant’s well-known trademark REZA and the relevant amount of money requested by the Respondent to transfer the disputed domain name, which suggests a speculative intent.
Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
“(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
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
you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
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 the 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.”
In the case at hand, the disputed domain name reza.com, originally registered on June 2, 1997, was registered in the name of the Respondent at least as of February 2006, as shown by the historical WhoIs records submitted as Annex 1 to the Response. At that time, the Complainant had already obtained, since several years, registrations for its trademark ALEXANDRE REZA in various countries, whilst the first trademark registration for REZA was filed by the Complainant only in 2016.
The Complainant claims that its trademark is internationally well known and that the Respondent, which trades on domain names, registered the disputed domain name to take advantage of its reputation. On the other hand, the Respondent states that the Complainant had no trademark rights in REZA at the time the Respondent acquired the disputed domain name, that the Respondent has not used the disputed domain name for any purpose relating to the Complainant’s trademark (such as advertising and selling jewelry products), and that it never approached the Complainant to sell the disputed domain name, nor has it ever engaged in any conversation about the disputed domain name with any person who identified themselves as having any relationship to the Complainant.
All the members of the Panel concur that the Complainant’s trademarks ALEXANDRE REZA and REZA are used and known in the jewelry sector but have different views regarding the relevance of such circumstance in the demonstration of the bad faith requirement in the present case.
One of the Panelists is of the view that the Respondent registered the disputed domain name in bad faith because the Complainant acquired reputation in its trademark, also known and used as REZA to distinguish jewelries products internationally, for years long before 2016 in the jewelry sector. Indeed, in 1997, press reviews mentioned the Staff at REZA’s Paris reaction after the information of Lady Diana’s death in Paris (as she was wearing one of REZA’s rings) and the consultation of any pages including Wikipedia relating this tragic event refers to REZA.
Therefore, this Panelist concludes that the Respondent must have had knowledge, and could not ignore, the Complainant’s rights when it registered the disputed domain name.
The Panelist also finds that the nature of the disputed domain name enhances the false impression that the disputed domain name is somehow officially related to the Complainant, as it may be perceived as used in connection with one of the Complainant’s official websites for sale, causing interrogation on the economic situation of the Complainant. Accordingly, by registering the disputed domain name, the Respondent has created a likelihood of confusion with the Complainant’s trademark, as it is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.
The same Panelist also states that the existence of an offer for sale to the public of a domain name on the website to which it directs is an indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is for Sale) Joshuathan Investments, Inc, WIPO Case No. D2002-0787; and Ferrari S.p.A v. Allen Ginsberg, WIPO Case No. D2002-0033) and that the offer to sell the disputed domain name for USD 250,000 is an indication that the Respondent registered the disputed domain name for the sole purpose of reselling it to a third party and obtaining financial gain within the meaning of paragraph 4(b)(i) of the Policy.
This Panelist concludes that the bad faith element of the Policy has been established and that the Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy.
The majority of the Panel instead finds that the Complainant has not demonstrated that the Respondent, by registering and using the disputed domain name, targeted or intended to target the Complainant and its trademark REZA. Indeed, there is no evidence that the disputed domain name might have been used in connection with the promotion of jewellery products or that the Respondent might be operating in the Complainant’s sector. Moreover, the Respondent has shown that the term REZA encompassed in the disputed domain name is a very common surname, especially in the Arabic and Persian countries, as well as a trademark also used by third parties – including the Reza Investment Company – to identify products and services different from the ones of the Complainant.
In addition to the above, based on the record, there is no evidence that the Respondent might have directly offered the disputed domain name for sale to the Complainant and the request for an amount of
USD 250,000 for the transfer of the disputed domain name was formulated by the Respondent in reply to an inquiry sent from a third party who made no reference to the Complainant. Therefore, the majority of the Panel also finds that the Complainant has failed to demonstrate that the Respondent registered or acquired
the disputed 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” as required by paragraph 4(b)(i) of the Policy.
In view of the foregoing, the majority of the Panel finds that the Complainant has failed to demonstrate that the Respondent registered or used the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking
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”.
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel also bears in mind that the Complainant in this case is represented by counsel and, therefore, it should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).
One of the Panelists denies the finding of Reverse Domain Name Hijacking since she finds that the Complainant was successful in proving the three substantive requirements prescribed by paragraph 4(a) of the Policy.
The majority of the Panel, instead, concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking for the following reasons:
the Complainant, which is represented by counsel, should have appreciated the weakness of its case and the fact that the name “Reza” encompassed in the disputed domain name cannot be exclusively referable to the Complainant;
the Complainant ignores several settled UDRP precedents, among them the requirement of evidence to support critical allegations, not recognizing that warehousing domain names is not per se improper, that response to an inquiry from a trademark owner to purchase the disputed domain name is not ordinarily improper, and that the purchase price of a domain name not exclusively referable to a trademark owner is a matter for the marketplace and not for the Panel;
the Complainant has attempted to mislead the Panel about its anonymous inquiry to purchase the disputed domain name, as the description in the Complaint (presenting the request as addressed by the Complainant) differs materially from the correspondence annexed to the Response;
the circumstances of the case show that this may be a speculative “plan B case” launched by the Complainant after the failure to purchase the disputed domain name – via an anonymous third-party email address – from the Respondent.
The Complainant is not excused by only learning of the proposed transfer to Reza Investment Company after filing the Complaint. First, basic pre-Complaint due diligence such as a Google search1 would have revealed that reza is a common name and frequently used in company names. Second, the Panel majority finds it hard to believe that an individual himself named Reza would not be aware of the ubiquity of that
1 A Google search for “reza” yields about 1,770,000 results, and there’s no reference to the Complainant on at least the first ten pages of search results. Rather the listings include links to the last shah of Iran (which is now the Islamic Republic of Iran), restaurants, footwear, and many performers, lawyers, physicians, professors, and other individuals whose first or last name is Reza. This reinforces the Respondent’s evidence and the Wikipedia definition of the term as a common name. Third, the Complainant at a minimum “had an obligation under this Rule [3(b)(xiii)] to explain to the Panel why” the Respondent’s surname and company name fell outside the safe harbor of paragraph 4(c)(ii) of the Rules. See Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193. The Complainant did not even address the possibility that the Respondent selected the disputed domain name because of his surname, whilst such circumstance could be indeed inferred from the registrant’s name shown in the public WhoIs records and indeed in the caption and text of the Complaint. Ignoring settled Policy precedent alone justifies a finding of abuse, see Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598.
Decision
For the foregoing reasons, by majority vote the Complaint is denied. The Panel majority further declares that the Complaint was brought in bad faith and that it constitutes an abuse of the administrative proceeding.
/Luca Barbero/ Luca Barbero Presiding Panelist
/Emmanuelle Ragot/ Emmanuelle Ragot Panelist (Dissenting)
/Richard G. Lyon/ Richard G. Lyon Panelist
Date: June 28, 2022
