WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Knead Holding S.A.L. v. Domains by Proxy, LLC / Jamil Fares
Case No. D2019-0996
1. The Parties
The Complainant is Knead Holding S.A.L., Lebanon, represented by Buckingham, Doolittle & Burroughs, LLC, United States of America (“United States”).
The Respondent is Domains by Proxy, LLC, United States / Jamil Fares, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <zaatarwzeit.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2019. On May 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name May 1, 2019. On May 1, 2019, 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 May 6, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 7, 2019.
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 May 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2019. Two informal email communications from the Respondent were received by the Center on May 6, 2019. The formal Response was filed with the Center on May 29, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on June 12, 2019. 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 Background
The Complainant and its predecessors operate a chain of restaurants in Lebanon and a number of other countries. The business has traded under the name “Zaatar W Zeit” since 1999.
The Complainant has invoked four Lebanese and Moroccan registered trade marks consisting of a device plus the words “Zaatar W Zeit” in both Arabic and English, including Lebanese trade mark no. 85281 filed on October 30, 2000, in class 42. All four registered trade marks appear to be registered in the name of “Breakfast & Co. SARL”, with an address in Lebanon.
Since 2004, the Complainant has operated a website at “www.zaatarwzeit.net”.
The Respondent registered the disputed domain name on January 22, 2006.
The Panel has not been provided with any evidence indicating that the Respondent has ever used the disputed domain name for an active website.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The disputed domain name is phonetically and confusingly similar to the Complainant’s trade mark and domain name.
Common misspellings or slight variations cannot defeat claims of confusing similarity.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant is unaware of any evidence establishing that the Respondent is commonly known by the disputed domain name. On the contrary, the Respondent is attempting to misappropriate the Complainant’s corporate identity or capitalise on the goodwill in the Complainant’s marks.
The disputed domain name has not been used substantively for over a decade.
The Respondent registered and used the disputed domain name in bad faith.
The Respondent registered the disputed domain name at least seven years after the Complainant first used its mark.
It appears that the Respondent registered the disputed domain name to reflect the Complainant’s trade mark with a view to selling it to the Complainant or the Complainant’s competitors.
The Respondent is using the confusingly similar disputed domain name to give the false impression that the Respondent is affiliated with the Complainant. The Respondent is thereby disrupting the Complainant’s business by causing confusion and loss of business to the Complainant. The disputed domain name is having a negative impact on the Complainant’s business as it continues to expand globally.
The following is a summary of the Respondent’s contentions.
The Respondent is “an ordinary citizen” who has registered “a few domains” over the last two decades in his role as a software developer. He uses these domain names for his clients or for his own projects. He is not a dealer in domain names.
The term “zaatar w zeit” is the name of a common Lebanese food. “Zaatar” refers to a mix of herbs, mainly thyme; “w” means “and”; and “Zeit” means oil. As this is a famous staple food in Lebanon and the Respondent is of Lebanese heritage, he bought the disputed domain name for potential olive oil and fine herbs import business. The domain name <zatarwzeit.com>, which is “a slight variation of mine”, “is also currently privately registered”.
There is even a bakery in Michigan, United States called “Zaatar W Zeit”. This is just one example which illustrates that the Complainant has chosen for its brand name a very common term in the Lebanese language.
The Complainant’s allegations are far-fetched. Name collisions such as this are bound to happen.
If the Complainant had a legitimate interest in the disputed domain name, then it would have registered it at the same time as registering the domain name <zaatarwzeit.net> on May 27, 2004. The Respondent only registered the disputed domain name on January 22, 2006. This shows that the Complainant had no interest in the disputed domain name when it registered the domain name <zaatarwzeit.net>.
The Respondent did not register or use the disputed domain name in bad faith. The disputed domain name is parked pending launch of the Respondent’s import business venture. A parked domain name cannot confuse Internet users.
It is well established that search engines such as Google and Yahoo have indexed the words “zaatar w zeit” so that they are associated with the Complainant’s website. A simple Google search immediately returns “pages after pages” relating to the Complainant’s business. This shows that the disputed domain name had no effect on traffic to the Complainant’s current website. Nor does the disputed domain name cause confusion as it does not appear on Internet searches.
The Respondent’s proposed business venture is significantly different to that of the Complainant. The Respondent’s business will be the import of goods whereas the Complainant runs a chain of restaurants.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant relies on four registered trade marks, “some of which” are said to have been assigned from Breakfast & Co. SARL to the Complainant. But the four certificates supplied to the Panel all show Breakfast & Co. SARL as the trade mark owner and the Complainant has not provided the Panel with evidence that any of the four marks have been assigned to the Complainant. However, in view of the Complainant’s allegations, the Panel has made an independent search of public trade mark databases and has found that the Complainant owns relevant registered trade marks in various jurisdictions. So far as the Panel can tell, the earliest trade mark was registered in Jordan, on May 9, 2001, consisting of a device plus the words “Zaatar W Zeit” in both Arabic and English, in international class 43. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In these circumstances, and bearing in mind that the first element functions primarily as a standing requirement (see section 1.7 of the WIPO Overview 3.0), the Panel concludes that the Complainant has trade mark rights in the figurative trade mark mentioned above and that this is confusingly similar to the disputed domain name, disregarding the generic Top Level Domain (“gTLD”) “.com”. Section 1.10 of the WIPO Overview 3.0 states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. The Respondent’s mere assertion that it registered the disputed domain name for the purpose of a future food import business does not constitute “demonstrable preparations” - in the absence of any credible supporting evidence. See section 2.2 of WIPO Overview 3.0.
In addition, the Panel notes the Respondent’s allegations that the disputed domain name comprises dictionary terms in Arabic. However, the Panel considers that merely registering a domain name comprising dictionary terms could not be sufficient if there is no evidence of demonstrable preparations to use it in connection with that alleged dictionary meaning rather than to trade off the Complainant’s trade mark rights. See section 2.10.1 of the WIPO Overview 3.0.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The key issue for the Panel to consider is whether, on the balance of probabilities, the Respondent registered the disputed domain name by reference to its alleged common meaning in Lebanese rather than with the Complainant’s trade mark in mind.
Despite offering an independent explanation for his selection of the disputed domain name, the Respondent has not actually denied that he was aware of the Complainant, which had been trading for some seven years by the time that the Respondent registered the disputed domain name and whose trade mark was registered before the disputed domain name. Furthermore, the Respondent acknowledges that he is of Lebanese heritage – and the Complainant is located in Lebanon.
As to the Respondent’s rationale for registering the disputed domain name, even if the Panel accepts that the terms “Zaatar” and “Zeit” denote common foodstuffs in Lebanon, namely a herbal mixture and oil respectively, the Respondent has supplied no evidence to indicate that the combination of these terms (joined by the conjunction “and”) is a common one. On the contrary, the Respondent makes the crucial admission that searching for the Complainant’s name on Google brings up page after page of search results relating to the Complainant. The Panel has verified by this by carrying out its own Google search - as it is entitled to so. Such evidence suggests that the combined term “zaatar w zeit” is strongly associated with the Complainant.
The Respondent’s gives only one, unsupported, example of alleged third party use of the combined term, namely for a bakery in Michigan, United States. But in any case, the Panel considers that this example does not affect the Complainant’s long-standing association with the name “zaatar w zeit”. It is telling that the Respondent has not supplied any evidence of third party use in Lebanon of a term allegedly in common use in that country.
Furthermore, as the Panel has pointed out, the Respondent has provided no evidence in support of its alleged rationale of registering the disputed domain name for a potential “olive oil and fine herbs import business”. Nor has the Respondent explained why this business has still not been launched, some 13 years later.
The Respondent mentions that the domain name <zatarwzeit.com>, i.e., omitting an “a” in “zaatar”, which he describes as “a slight variation of mine”, is also privately registered. But the Panel does not consider that the Respondent’s ownership of a domain name comprising a misspelling of the term “zaatar w zeit” would support the Respondent’s case.
For the above reasons, the Respondent has not satisfied the Panel that the disputed domain name is an accidental “name collision”. Rather, having carefully weighed up the evidence, the Panel has concluded on the balance of probabilities that the Respondent registered the disputed domain name to target the Complainant’s trade mark.
It does not assist the Respondent that the Complainant did not register the disputed domain name at the same time as registering <zaatarwzeit.net> in 2004, assuming that the disputed domain name was available at that time. The Complainant’s failure to do so, for whatever reason, would not have justified the Respondent itself registering the disputed domain name later in the circumstances of this case.
Nor does it help the Respondent that the disputed domain name does not appear in the Google search results, as the Respondent also asserts. The Panel nonetheless considers that the disputed domain name constitutes a passive holding in bad faith, as explained in section 3.3 of the WIPO Overview 3.0. This is based, amongst other things on the distinctiveness and reputation of the Complainant’s mark as well as the failure of the Respondent to provide any evidence of actual or contemplated good-faith use.
Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <zaatarwzeit.com> be transferred to the Complainant.
Date: July 1, 2019