Zohoor Al Reef Trading Company v. Adi Azar
WIPO Case No. D2021-0302
UDRP Decision
1. The Parties
The Complainant is Zohoor Al Reef Trading Company, Saudi Arabia, represented by Astura AARPI, France.
The Respondent is Adi Azar, United States of America (“United States”), represented by Cylaw Solutions, India.
2. The Domain Name and Registrar
The disputed domain name is registered with NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On the same day, 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 February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was initially February 23, 2021. However, on February 9, 2021, the Respondent requested an extension of time due to the Covid-19 pandemic situation. On the following day, in accordance with paragraph 5(b) and 5(e) of the Rules, the Center granted the automatic four calendar day extension plus an exceptional extension of the due date for Response to March 5, 2021. The Response was filed with the Center on March 5, 2021. The Complainant made an unsolicited supplemental filing on March 17, 2021. The Respondent made an unsolicited supplemental filing on March 24, 2021.
The Center appointed Matthew Kennedy, David H. Bernstein, and Gerald M. Levine as panelists in this matter on April 30, 2021. 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.
4. Factual Background
The Complainant manufactures and sells beauty care products, fragrances, and cosmetics. It was founded in 1993 in Saudi Arabia and operates through a retail network in the Middle East and North Africa. The initial words in the Complainant’s Arabic name may be translated as “countryside flowers”. The Complainant transliterates the word meaning “flowers” as “Zohoor” in its English name. The Complainant has obtained trademark registrations for ZOHOOR in multiple jurisdictions, including Saudi Arabia trademark registrations numbers 148709 and 148710, both for ZOHOOR, both registered on August 9, 2015, and specifying goods and services in classes 3 and 35, respectively. The Complainant has also registered its ZOHOOR trademark in Bahrain, Iran (Islamic Republic of), Jordan, Kuwait, Lebanon, Morocco, Oman, Qatar, Sudan, Tunisia, Turkey, United Arab Emirates, the West Bank, and Yemen. Until recently, the Complainant branded its business as “Zohoor Alreef” with a flower bud logo. It registered the domain name and used it in connection with a website where it provided information about itself and its products. The Complainant has also registered the domain names and . In the fall of 2020, the Complainant rebranded its business as ZOHOOR with a circular calligraphic logo. At the time of this Decision, the domain name redirects to , which the Complainant now uses in connection with its rebranded website in Arabic and English.
The Respondent was born and raised in Jordan and moved to the United States in 2004. He previously worked as a web application developer and now focuses on online marketing. At the commencement of this proceeding, he was the managing director of a company that matches homeowners and home improvement contractors. He has registered many domain names.
The disputed domain name was acquired by the Respondent at an open auction of expired domain names on December 30, 2019 for the price of USD 3,825. The disputed domain name resolves to a webpage that offers it for sale. On the webpage, the disputed domain name is displayed alongside a geometric flower logo and described as a “premium” domain name. The webpage displays two prices: USD 96,000 to “buy it now” or USD 80,000 as the minimum permissible offer.
On September 9, 2020, the Complainant contacted the Respondent regarding a possible purchase of the disputed domain name. The Respondent offered to sell it for USD 32,000, claiming that he and his partners had spent about USD 27,000 on the domain name. The Complainant’s budget was USD 20,000. The Parties failed to reach an agreement on the price.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical to the Complainant’s ZOHOOR trademark. “Zohoor” has no meaning in English in relation to the Complainant’s business. It could only refer to a first name in Arabic. “Zohoor” constitutes a fanciful and highly distinctive trademark as it does not describe the Complainant’s activity.
The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has not granted to the Respondent any right to use the ZOHOOR trademark, including in the disputed domain name, and has no relationship, affiliation or connection whatsoever with the Respondent. The Respondent does not offer any goods or services under the disputed domain name. The Respondent is not commonly known by the name “Zohoor”. The Respondent is not making a noncommercial use of the disputed domain name. The mere registration of a so-called generic term gives no right or legitimate interest in the disputed domain name because it is identical to the Complainant’s trademark. Moreover, the Respondent provides no evidence that “Zohoor” spelt in Latin characters means “flower” in Arabic or is generically used to mean “flowers”. Quite to the contrary, the Respondent uses Arabic letters or “zuhur” in Latin characters to try and show that “Zohoor” is a generic spelling of “flowers”. The Respondent operates in the United States but “zohoor” has no dictionary or generic meaning in English. The Respondent alleges that he plans to use the disputed domain name for a website selling flowers. However, he provides an undated mock-up website while the disputed domain name still leads to the parking page offering it for sale for USD 96,000, which is inconsistent with the Respondent’s claimed use. Additionally, while the Respondent claims to have vast experience in selling online flowers since 2007, his own website does not mention him being active in the flowers business.
The disputed domain name was registered and is being used in bad faith. The disputed domain name is currently parked at a webpage where it is for sale for USD 96,000, which exceeds the out-of-pocket costs for its registration as contemplated by paragraph 4(b)(i) of the Policy. The Respondent has registered at least 52 domain names, some of which incorporate third parties’ widely-known trademarks filed worldwide, including <uber****.com>, <oracle*********.com> and <harlock.com>. These domain names all redirect to parking pages where they are offered for sale for prices exceeding related out-of-pocket costs. The Respondent has established a pattern of abusive registrations as contemplated by paragraph 4(b)(ii) of the Policy. The Respondent claims that he has wide experience in the registration of domain names. Under the concept of wilful blindness, the Respondent has a duty to perform basic searches to ensure he is not infringing any third parties’ rights. The top Internet search results for “Zohoor” in Latin characters refer only to the Complainant and its business. The search results for “Zohoor” in the WIPO Global Brand Database refer to the Complainant’s trademark registrations, including in Jordan.
B. Respondent
The Respondent is an entrepreneur who acquired the disputed domain name at a premium in good faith after fully understanding the generic nature of the term “Zohoor”. “Zohoor” is a first name for individuals in numerous Asian and Arab countries. It is also a generic word meaning “flowers” in Arabic. It is also a geographical place name and has been adopted by numerous businesses. It is very common for Arabic companies to use Arabic words in English letters in their businesses. “Zohoor” is basically an Arabic word written as “زهور”. The word may be represented interchangeably as “zuhur” or “zohoor”. Many people on Facebook in Jordan are named “Zohoor”. A Google search for “زهور” only returns images of flowers. A Google search for “zohoor” mainly returns results for the Complainant due to search engine optimization but there are many other references to “Zohoor” on the Internet.
The Complainant has no monopoly over the common term “zohoor”. It was not invented by the Complainant. The word “zohoor” in both Arabic and English has been adopted by innumerable businesses around the world. The Complainant’s stand-alone mark ZOHOOR was only registered in 2014 and never in the United States. “Zohoor” is a generic word. The Complainant’s own logo includes a flower while its name in Arabic translates to “flowers”. The Facebook profile “zohooronline.com” has been used for approximately ten years in Saudi Arabia to deliver flowers. Many other businesses include “zohoor” in their name because it means “flowers”.
The Respondent does have rights and a legitimate interest in the disputed domain name. This interest stems from the fact that the keyword in the disputed domain name is a common/generic Arabic word which is a first name for individuals around the world. Moreover, it has a descriptive and well-known meaning that is separate and distinct from the Complainant’s brand name. Although the Respondent registered the disputed domain name more than a year ago and left it parked, given his vast experience in the field of selling online flowers since 2007, there is no doubt that the Respondent always had future plans for the disputed domain name on its acquisition. The Respondent has already sold his existing business and is ready to hop onto the next venture as an online flower marketplace by July 2021. The Respondent may target the Arabic-American community in the United States. The Complaint admits that “Zohoor” is a first name for Arabic people. The Respondent holds many other domain names that consist of first or last names, Arabic names or Arabic/Araby words or that are related to flowers. Although the Respondent acquired the disputed domain name on January 2, 2020, due to the Covid pandemic and surrounding uncertainty, things could not progress sufficiently to launch the project regarding any flower-related domain names. The Respondent does not argue that he has made demonstrable preparations to use the disputed domain name.
The disputed domain name was not registered and is not being used in bad faith. The Respondent’s native language is Arabic and he was born and raised in Jordan so he is well aware of the meaning of the Arabic term “zohoor”. He was actively involved in the online flower business from 2008 to 2017 and the disputed domain name simply means “flowers”. The disputed domain name was registered due to its generic nature and hence registered in good faith. The Respondent had never heard of the Complainant or come across its products until September 9, 2020, when the Complainant’s IT Supply Chain Director called him and asked for a quotation. No evidence has been provided which even purports to show that the Respondent actually was aware or ought to have been aware of the Complainant. The Respondent is located in the United States, from where he has professionally operated since 2004. The Complainant does not seem to have any kind of presence in the United States and no United States trademark. Even an online search of the Jordanian trademark register shows just two registrations for ZOHOOR ALREEF and none for ZOHOOR. The Respondent denies that he registered the three other domain names highlighted by the Complainant in bad faith. The UDRP does not require a respondent to conduct trademark searches in every country of the world. The concept of wilful blindness does not apply here as the Complainant’s mark is not registered in the United States and a layman can hardly be supposed to have knowledge of the WIPO Global Trademark Database. “Zohoor” is used to refer to numerous other entities and the Complainant has only recently rebranded from “Zohoor Al Reef” to ZOHOOR.
6. Discussion and Findings
6.1 Unsolicited Supplemental Filings
The Complainant made an unsolicited supplemental filing after the filing of the Response. The Respondent then made its own unsolicited supplemental filing, prior to the appointment of the Panel.
Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
The Complainant made its supplemental filing to respond to certain allegations in the Response. The Respondent objects to the admission of the Complainant’s supplemental filing. However, if the Panel admits that filing, the Respondent asks the Panel to accept his own supplemental filing so that he can reply to it.
The Panel observes that the Complainant’s supplemental filing aims, in part, to respond to the Respondent’s assertion of a legitimate interest in using the disputed domain name in connection with an online flower marketplace, including the considerable amount of evidence filed along with that assertion. The Complainant could not have anticipated that assertion or that evidence at the time of the Complaint and the Panel considers that the Complainant should be given a fair opportunity to respond to it. The Respondent has taken the opportunity to reply in his own supplemental filing. Both supplemental filings were made before the appointment of the Panel, they will allow the Panel to rule on a complete factual record and they will not unduly burden the proceeding.
Therefore, the Panel exercises its discretion to admit both Parties’ supplemental filings and will take them into consideration in this decision according to their respective relevance, materiality and weight as part of the evidence on the record.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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.
The burden of proof of each element is borne by the Complainant. Given that the three elements apply cumulatively, a failure to satisfy any one element will result in the Complaint being denied.
A. Identical or Confusingly Similar
Based on the evidence presented, the Panel finds that the Complainant has rights in the ZOHOOR mark.
The disputed domain name wholly incorporates the ZOHOOR mark. The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element may be disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy, unless the gTLD suffix has some relevance to the comparison between the trademark and the domain name as a whole, which is not the case here. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Whether the Respondent has rights or legitimate interests in the disputed domain name is a close question. The Panel notes the arguments of both Parties regarding this element, which are summarized in section 5 above. Although the parties disagree about the proper transliteration of the Arabic word زهور, which is a word meaning “flowers”, the Panel finds support in the record for “zohoor” being one appropriate transliteration. The Complainant itself shows images of flowers on its website (which is natural for a company that sells perfumes, among other cosmetics); the Respondent used a flower logo on the website at which it advertised the disputed domain name for sale even before having been contacted by the Complainant. The Panel is thus inclined to accept, on the limited record available to it, that “zohoor” is a transliteration for the Arabic word زهور, which means “flowers”.
Whether the Respondent has the right to register that transliteration is a complex question. The parties have not briefed the question of whether a respondent in the business of selling domain names consisting of dictionary words has the same right to register and sell the transliteration of a dictionary word and whether a transliteration should be treated as other foreign equivalents are. In this case, the parties have not submitted sufficient evidence to guide the Panel in its assessment of the frequency with which the word “zohoor” is written using Latin characters or the extent to which the word, written in Latin rather than Arabic characters, is understood to mean “flowers”.
Equally difficult is the assessment of the Respondent’s assertion that, if he does not sell the disputed domain name, he intends to use it to create a website to sell flowers. In support of this contention, he provided a mock-up of his planned website and asserted that he has extensive work experience in the online flower-selling industry. The Panel notes that the Respondent’s work history in the flower-selling business is not documented in the record, the Respondent’s website mock-up is undated (and is inconsistent with the Respondent’s statement to the Complainant during their settlement negotiations that he intended to franchise FTD flowers in the Arabic region), and the Respondent appears to disclaim in his supplemental filing that he is relying on his demonstrable preparations to use the disputed domain name to establish his rights and legitimate interests. Although the Panel acknowledges the Respondent’s arguments, the Respondent has not submitted the kind of evidence required to establish demonstrable preparations to use the disputed domain name for a website through which he intends to sell flowers. See generally WIPO Overview 3.0, section 2.2.
In the end, given the Panel’s findings regarding bad faith, it is not necessary to determine whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The first and second of these are as follows:
“(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name.
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct.”
The disputed domain name was acquired by the Respondent on December 30, 2019, years after the registration of the ZOHOOR trademark in Saudi Arabia and other jurisdictions.
With respect to the first circumstance set out above, there is no dispute that the Respondent is offering the disputed domain name for sale at a price much higher than the price he paid for it. The question that arises is whether the Respondent targeted the Complainant’s ZOHOOR trademark when he registered the disputed domain name.
The Parties agree that “zohoor” is not an invented word but rather a Romanized form of an Arabic first name. The evidence shows that various businesses in Arabic-speaking countries incorporate “zohoor” in their names online including, in some cases, as a Romanization of the Arabic word for “flowers”. Accordingly, the fact that the disputed domain name wholly incorporates “zohoor” with the addition only of a gTLD suffix does not, of itself, give rise to the inference that the Respondent knew of the Complainant’s mark or intended to target the Complainant.
The Complainant does not claim to have any market presence or trademark registrations in the United States, where the Respondent is resident. The Respondent declares that he had never heard of the Complainant or come across its products until September 9, 2020, when the Complainant’s IT Supply Chain Director called him and asked for a quotation for the disputed domain name. The Respondent has provided evidence of that conversation and the ensuing email exchanges. That evidence has not been contradicted.
The Complainant argues that the Respondent, as an experienced registrant of domain names, was willfully blind to the Complainant’s trademark rights because he should have known of the existence of the ZOHOOR trademark in the Middle East and North Africa through online searches prior to his registration of the disputed domain name. It is true that, under the UDRP, experienced domain name registrants have an affirmative obligation under paragraph 2 of the Policy to determine whether registration of the name would violate another person’s rights. See WIPO Overview 3.0, sections 3.2.2 and 3.2.3; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. It is unclear whether the Respondent undertook any such due diligence in this case, prior to registering the disputed domain name. The Complainant, however, has not provided sufficient evidence to support a finding that, had the Respondent conducted reasonable due diligence prior to acquiring the disputed domain name in December 2019, he would have become aware of the Complainant’s trademark rights. The Panel has reviewed the Complainant’s evidence and notes that the results of a Google search for “zohoor”, even in October 2020, were mainly for “Zohoor Alreef”, not ZOHOOR. The top search result was the Complainant’s website, which was then associated with the domain name not . The Complainant provides screenshots of that website as it appeared in November 2020 but, given its recent rebranding as ZOHOOR, the Panel questions the probative value of this evidence as regards the brand’s online presence prior to the registration of the disputed domain name. As noted above, the Complainant holds no trademark rights in the United States, where the Respondent is resident, so a search of the United States Patent and Trademark Office database would not have alerted the Respondent to the Complainant’s rights. While a search of the WIPO Global Brand Database would have revealed the existence of the Complainant’s trademark registrations for ZOHOOR in the Middle East and North Africa, the Panel does not consider that the Respondent should be deemed to have constructive knowledge of the contents of that database. Moreover, the Respondent has credibly asserted that he registered the disputed domain name because of its value as the transliteration of the Arabic word زهور, which can be translated to mean “flowers”. On this record, the Complainant has not established that the Respondent likely registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant. Accordingly, the Panel finds that the Complainant has failed to discharge its burden of showing that the Respondent knew, should have known of (or even was willfully blind to), the ZOHOOR trademark and registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant as set out in paragraph 4(b)(i) of the Policy.
With respect to the second circumstance set out above, the Complainant submits that three other domain names held by the Respondent incorporate third party trademarks and establish a pattern of abusive registrations. The Panel notes that two of these other domain names incorporate trademarks that are well known in the United States. The Respondent admits that his registration of the domain name “looks prima facie wrong”, although he denies that it violates rights. The Panel also notes that the Respondent’s justification for his registration of the domain name lacks credibility. However, showing a pattern of cybersquatting against some other domain names may create an inference but is not enough by itself to establish cybersquatting against all of the Respondent’s domain names. Rather, a key element of this part of the Policy is a showing that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its ZOHOOR trademark in a corresponding domain name. Here, the preponderance of the evidence submitted by the parties supports a finding that the Respondent registered the disputed domain name because of its transliterated and translated meaning, not in order to target the Complainant. Accordingly, this evidence is insufficient to demonstrate the existence of the circumstance set out in paragraph 4(b)(ii) of the Policy.
The Complainant has not asserted bad faith under any other circumstances listed in the Policy, nor has the Panel found any other basis to find that the Respondent registered the disputed domain name in bad faith. Therefore, the Panel does not find that the disputed domain name has been registered and is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.
D. 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”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent requests a finding of reverse domain name hijacking on the basis that any amount of due diligence would have shown that the Complainant could not prove at least one of the three requirements in the Policy. The Respondent argues that this is a “Plan B” case, initiated after the Complainant failed to acquire the disputed domain name in the marketplace. The Complainant’s rebranding proves that its real motive is to reverse hijack the disputed domain name.
The Complainant argues that it is inconsistent for the Respondent to offer the disputed domain name for sale and then to claim that the Complainant, as the legitimate owner of the ZOHOOR trademark, is acting in bad faith simply because it tried to resolve the matter amicably by purchasing the disputed domain name prior to launching this UDRP proceeding.
The Panel notes that the Complainant contacted the Respondent regarding a possible purchase of the disputed domain name prior to initiating this proceeding. In the Panel’s view, in the absence of further evidence of bad faith, the Complainant’s actions are consistent with a good-faith intention to obtain the disputed domain name quickly, for a reasonable price, and without an adversarial posture. Although the Panel questions the Complainant’s motive for failing to disclose to the Panel that it had rebranded in 2020, the Complaint was not obviously without merit, for the reasons set out above.
Accordingly, the Panel does not find that the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding.
7. Decision
For the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Presiding Panelist
David H. Bernstein
Panelist
Gerald M. Levine
Panelist
Date: May 12, 2021
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