Shulem Deen v Anna Sakidon

WIPO Case No. D2022-3986

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Shulem Deen v. Anna Sakidon

Case No. D2022-3986

1. The Parties

The Complainant is Shulem Deen, United States of America (“United States”), represented by Kaufman &

Kahn, LLP, United States.

The Respondent is Anna Sakidon, Georgia.

2. The Domain Name and Registrar

The disputed domain name <shulemdeen.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2022. connection with the disputed domain name. On October 25, 2022, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2022, 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 November 1, 2022.

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 November 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November28, 2022.

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The Center appointed John Swinson as the sole panelist in this matter on December 7, 2022. 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 is an author, writer, coach, and speaker from Brooklyn, New York. He serves as a board member at Footsteps, a New York City-based organization that offers assistance and support to former members of the ultra-Orthodox Jewish community.

The Complainant originally owned the disputed domain name. The Complainant registered the disputed domain name in 2014 and used it from that date.

According to the Complaint, the Complainant also owned around twenty other domain names and sometime
in 2019, he uploaded them to AfterNIC.com for sale. The disputed domain name was included in that list,
but the Complainant choose a checkbox option that AfterNIC provided for “Do Not List For Sale.” The
Complainant reasonably understood that to mean that AfterNIC would not sell the disputed domain name.
Despite the “Do Not List For Sale” designation, ICANN WhoIs records show that on or about October 25,
2021, the Respondent purchased the disputed domain name. AfterNIC reported the sale was for USD 500.

Despite Complainant’s request to rescind the transaction, AfterNIC refused to do so.

The website at the disputed domain name has the same content that was on the Complainant’s website. It
looks like a website created by the Complainant and has biographical and other information about the
Complainant. Unlike the Complainant’s original website, it also includes third party advertisements.

The Respondent did not file a Response, so little is known of the Respondent. The Registrar’s records give an address for the Respondent in Tbilisi, Georgia. The email contact for the Respondent is a Gmail address with the name of a Mr. Effinger.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following submissions:

The Complainant has common law trademark rights in his personal name. The Complainant started writing and publishing in 2003 under a pseudonym, and started to publish under his own name and establish rights in the SHULEM DEEN trademark starting in 2010, eleven years before the Respondent without authorization

purchased and took control of the disputed domain name in 2021.

The Complainant is a renowned author whose work, in connection with the SHULEM DEEN trademark, has been published in prominent publications including the New York Times, Forward, The New Republic, and many others.

The Complainant registered the disputed domain name on February 27, 2014, and it was accidentally sold to the Respondent for USD 500.

The disputed domain name is virtually identical to the Complainant’s SHULEM DEEN trademark.

There is no evidence of the Respondent’s 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 because the website at the disputed domain name infringes the Complainant’s copyright. The Respondent

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has not been commonly known by the disputed domain name. The Respondent has acquired no relevant
trademark or service mark rights.

The disputed domain name is used in connection with a website that is virtually identical to the website that the Complainant used before the disputed domain name was “hijacked” by the Respondent – including a photograph of the Complainant and links to articles he wrote.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the

Policy have been satisfied, namely:

(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 onus of proving these elements is on the Complainant even though the Respondent failed to submit a
Response.

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. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant does not own any relevant registered trademarks. The Complainant relies upon common law trademark rights and the Complainant is entitled to so under the Policy. The Complainant has provided evidence that the Complainant has been using SHULEM DEEN as a trademark since at least 2015 and that this trademark is known in publishing circles. For example, the Complainant’s book All Who Go Do Not

Return was reviewed or referred to in New York Times, The New Yorker, Wall Street Journal, The
Washington Post, The New Republic, Chicago Tribune, Minneapolis Star Tribune, The Boston Globe,
Maclean’s Magazine, Ha’aretz, The Jerusalem Post, The Jewish Week, and many others. The Panel finds
that the Complainant has established common law trademark rights for purposes of the UDRP. See Marian

Keyes v. Old Barn Studios Ltd, WIPO Case No. D2002-0687.

The disputed domain name includes the Complainant’s SHULEM DEEN trademark in its entirety.

The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s

SHULEM DEEN trademark, disregarding the Top-Level Domain “.com”.

The fact that the Respondent is targeting the Complainant’s trademark (as discussed below) supports the source identifier.

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The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.

B. 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 the 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. Previous UDRP 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 sufficient for a complainant to raise a prima facie case against the respondent under this head and an

evidential burden of production will shift to the respondent to rebut that prima facie case.

The Complainant asserts that there is no evidence of the Respondent’s 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 because the website at the disputed domain name infringes the Complainant’s copyright, that the Respondent has not been commonly known by the disputed domain name, and the Respondent has acquired no relevant trademark or service mark rights.

The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.

The Respondent has failed to produce any evidence to establish her rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances, and that the Respondent has no rights or any legitimate interests in the disputed domain name.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and his
trademark. Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods, WIPO
Case No. D2008-0832; The Tolkien Estate Limited v. Domain Investments / Matthew Jensen, WIPO Case
No. D2021-2571.

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The Respondent did not file a Response. Possibly, the Respondent could have argued that because the
Respondent purchased the disputed domain name when it was (accidentally) listed for sale by the
Complainant, the Respondent could not have registered the disputed domain name in bad faith. However,
the Respondent’s conduct after registering the disputed domain name strongly suggests that the
Respondent did not have good motives when purchasing the disputed domain name.

The Respondent is using the Complainant’s SHULEM DEEN trademark, name and writings to attract traffic to the website at the disputed domain name where unlike the Complainant’s original website there is also third party advertisements. The Respondent’s conduct is a probable attempt to create a likelihood of confusion with the Complainant for commercial purposes.

It is also relevant that the website at the disputed domain name includes copies of the Complainant’s writings
and his photograph, which very well could be copyright infringements. Compare Mr. Gordon Ramsay v.
Kushnarenko Oleksii, WIPO Case No. D2021-0145.

The Panel concludes that the Respondent specifically knew of and targeted the Complainant and that the Respondent is attempting to trick the public into believing that the website at the disputed domain name is associated with the Complainant. In short, the Panel concludes that the Respondent registered and is using

the disputed domain name to take advantage of the Complainant’s reputation and SHULEM DEEN
trademark. Block.one v. See PrivacyGuardian.org / Burstein-Applebee, Jerry K. Chasteen, WIPO Case No.

D2021-1516.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.

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 <shulemdeen.com> be transferred to the Complainant.

/John Swinson/
John Swinson
Sole Panelist
Date: December 21, 2022