WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jumeirah Beach Resort, LLC v. Tarek Ahmed, Larry Silverstien and Thomas Willis
Case No. D2007-1366
1. The Parties
The Complainant is Jumeirah Beach Resort, LLC of Dubai, United Arab Emirates (“UAE”), represented by Clyde & Co., UAE.
The Respondents are Tarek Ahmed (“First Respondent”) of New York, United States of America (“USA”), Larry Silverstien (“Second Respondent”) of San Francisco, USA, and Thomas Willis (“Third Respondent”) of Miami, USA.
2. The Domain Names and Registrar
The disputed domain names < burjalarab.com> and <burjalarabhotel.com> (the “Domain Names”) are registered with Go Daddy Software (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 13, 2007 and in hard copy on September 17, 2007. The Complaint as originally filed was against only the First Respondent and identified the registrar of the Domain Names as Network Solutions.
The Center transmitted its request for registrar verification to the Registrar on September 13, 2007. The Registrar replied the same day, stating that it was the Registrar of the Domain Names, but that the First Respondent was not the registrant. The Registrar provided the contact details on its Whois database, according to which the Second Respondent was the registrant of the Domain Name, <burjalarab.com>, and the Third Respondent was the registrant of the Domain Name, <burjalarabhotel.com>. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registrations, that the Domain Names would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of its principal office. The Registrar had not received a copy of the Complaint.
On September 17, 2007, the Center sent the Complainant a Complaint Deficiency Notification stating the following deficiencies. First, that the registrar was incorrectly identified. Secondly, that the registrants of the Domain Names according to the information provided by the Registrar were the Second and Third Respondents respectively. Thirdly, that there was no submission to a mutual jurisdiction as required by paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). In relation to the second deficiency, the Center pointed out that either an amended Complaint should be filed showing the relationship between the two respondents identified by the Registrar, or two separate complaints should be filed against each of the Second and Third Respondents. The Notification was copied to the Second and Third Respondents’ email addresses according to the Registrar’s Whois database.
Also on September 17, 2007, the Center received an email from the email address of the First Respondent as identified in the Complaint stating that the sender did not own the Domain Names.
On September 18, 2007, the Center received an email apparently from the Third Respondent but providing the Second Respondent’s email address as the return address. The email stated that after receiving the Center’s email, the Domain Name <burjalarab.com> was now missing from his account with the Registrar, and asking what was going on. The Center replied stating that this Domain Name was the subject of a Complaint under the Policy which would be notified in due course, and noting that the email address used by the Third Respondent belonged to the Second Respondent, the registrant of this Domain Name. The Center asked the Third Respondent to confirm that this was his email address.
The Complainant filed an amended Complaint by email on September 24, 2007, and in hard copy on September 28, 2007. The amended Complaint added the Second and Third Respondents, relying on the Third Respondent’s email as indicating a connection between them. It also identified the Registrar as the concerned registrar in place of Network Solutions and contained a submission “to the jurisdiction of the US courts”. The Complainant filed a further amended Complaint by email on September 27, 2007, and in hard copy on October 5, 2007, in which the jurisdiction submission was altered to the “Courts at the location of the principal office of the concerned registrar”.
The Center verified that the Complaint as amended satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on October 2, 2007. The notifications sent by email to the addresses of the Respondents on the Whois appear to have transmitted successfully to all three Respondents. The hard copy notification was delivered to the First Respondent but hard copies sent to the Second and Third Respondents were returned as undeliverable. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 22, 2007. A Response of the Second Respondent was filed with the Center by email on October 18, 2007. The Center notified the default of the First and Third Respondents on October 23, 2007. The Complainant submitted a supplemental filing to the Center by email on October 29, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 29, 2007. 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. Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly notified to all of the Respondents, and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Procedural Ruling
Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. The Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request to make an additional submission may be regarded as an invitation to the Panel to exercise this discretion. However, in exercising this discretion, a Panel must take into account the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. Accordingly, additional submissions are only permitted in exceptional circumstances.
In this case, the Panel is able to decide the dispute without the Complainant’s supplemental submission. The Panel will therefore proceed without admitting this submission or taking it into account.
5. Factual Background
The Complainant operates the “Burj al Arab” luxury hotel in Dubai. The hotel was officially opened on December 1, 1999, following considerable publicity. It was the tallest hotel in the world and a significant landmark.
The Domain Names were registered by the First Respondent on December 4, 1999. As at September 10, 2007, the Domain Names were used for a website in English which resembled in some respects the Complainant’s website and included a photograph copied from it as well as content copied from the entry on the Complainant’s hotel in Wikipedia. The First Respondent’s website solicited advertisements and included Google Ad-Links to third party websites, including websites of third parties providing hospitality services in Dubai in competition with the Complainant.
Immediately after the original Complaint was served on the First Respondent on September 13, 2007, he sent an email to the Complainant’s solicitors saying “I don’t own these domain names as of 9/12/2007. Have a good day.”
Following the Complaint, the Domain Name, <burjalarab.com>, was pointed to a website in English at “www.luv.tv” offering free online dating services and including Google Ad-Links; and the Domain Name, <burjalarabhotel.com> was parked at a page on the Registrar’s server containing links to websites of other hotels in Dubai.
The Complainant has registered BURJ AL ARAB as a trademark in various countries pursuant to applications made at various dates from 2001 onwards.
The First Respondent was held to have registered the domain name <microsof.com> in bad faith in Microsoft Corporation v Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548. He is currently the registrant of domain names <phpmyspace.com> and <phpmyspace.net>.
6. Parties’ Contentions
The Complainant contends that the mark BURJ AL ARAB had become well-known and distinctive of its hotel by December 4, 1999, when the Domain Names were registered. The Complainant claims rights in this mark by virtue of its use and the registrations obtained in various countries. The Complainant submits that the Domain Names are identical or confusingly similar to this mark, having, in one case, an identical second level domain and, in the other, a second level domain which is identical apart from the addition of the generic term “hotel”.
The Complainant maintains that the Respondents have no rights or legitimate interests in respect of the Domain Names. It alleges that their use of these Domain Names has not been for a bona fide offering of goods or services, but rather to trade off the Complainant’s reputation and disrupt its business.
The Complainant further contends that the Domain Names were registered and are being used in bad faith. It submits that the First Respondent is likely to have been aware of its mark when he registered the Domain Names as a result of the extensive publicity surrounding the opening of the hotel, which predated the registration of the Domain Name.
The Complainant maintains that the use of the Domain Names by the First Respondent for a website superficially similar to its website was liable to mislead Internet users into believing that his website was authorized by or associated with the Complainant. The Complainant considers that the advertisement of unrelated hotels on the First Respondent’s website was liable to tarnish and dilute its trademark.
The Complainant further alleges that the Domain Names were registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name and submits that it is part of a pattern of conduct on the part of the Respondent.
According to the Complainant, the transfer of the Domain Names from the First Respondent to the Second and Third Respondents took place after the Complaint was filed on September 13, 2007, and is in itself further evidence of bad faith, as is the provision by the Second and Third Respondents of false and incomplete contact details. The Complainant also points out that the Second and Third Respondents are connected since the Third Respondent sent an email to the Center giving the Second Respondent’s email address as the return address.
The Complainant asks for a Decision that the Domain Names be transferred to it.
The Second Respondent states that the Domain Name, <burjalarab.com>, was registered in 1999 before any of the Complainant’s trademarks were registered. He also points out that “Burj al Arab” means “Tower of the Arabs/Arabia” in Arabic.
He claims that the Domain Name was used for five years as a middle eastern news site and was then taken down since it did not succeed. He says that he was in the middle of redesigning the site when the Registrar locked the Domain Name and as a result he is unable to provide copies of old versions of the site.
As mentioned above, the First and Third Respondents did not submit any responses.
7. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (a) that the Domain Names are identical or confusingly similar to a trademark or service mark or marks in which the Complainant has rights; (b) that the Respondents have no rights or legitimate interests in respect of the Domain Names; and (c) that the Domain Names have been registered and are being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
It is clear that the Complainant has registered rights in the mark BURJ AL ARAB. It is well established that the first requirement of the Policy can be satisfied even if the Complainant did not obtain the rights until after the Domain Name was registered: see, for example, AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527. The fact that the registration of a domain preceded the registration of a complainant’s mark may be relevant to the second and third requirements of the Policy, but does not affect the operation of the first.
In any case, the Panel is satisfied on the evidence that the Complainant already had unregistered rights in the mark BURJ AL ARAB as a result of the extensive publicity surrounding the official opening of its hotel under this name by December 4, 1999, when the Domain Names were registered. Although the mark has a descriptive connotation in Arabic, the publicity was, in the Panel’s view, sufficient to make it distinctive as the name of the hotel, particularly for the many potential customers of a hotel of this nature who do not speak Arabic.
The Panel is also satisfied that the Domain Names are identical or confusingly similar to the Complainant’s mark. The second level domain of the first Domain Name is identical to the mark and that of the second Domain Name is identical apart from the addition of the generic term “hotel”.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
In the Panel’s view, the Respondents have not used the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute so as to give rise to rights or legitimate interests within the meaning of the Policy.
Prior to the original Complaint, the Second and Third Respondents had made no use of the Domain Names. The Panel rejects the Second Respondent’s claim to have been using the Domain Name, <burjalarab.com>, previously for a news site; this claim is wholly unsubstantiated and inconsistent with the registration of the Domain Name in the name of the First Respondent.
Furthermore, the use made of the Domain Names by the Second and Third Respondents since the original Complaint has not been for a bona fide offering of goods or services, but rather to obtain commercial gain by attracting internet users to their websites through the confusing similarity of the Domain Names with the Complainant’s well-known mark. The same applies to the use made of the Domain Names by the First Respondent prior to the original Complaint.
It seems clear that the Respondents have not been commonly known by the Domain Names. Nor have they made non-commercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s mark. On the contrary, they have made unfair commercial use of the Domain Names with intent for commercial gain to misleadingly divert consumers and to tarnish the Complainant’s mark.
The Panel sees no other basis on which it could be said that the Respondents have acquired rights or legitimate interests in the Domain Names or any corresponding name. The Panel concludes that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel considers that the original registration of the Domain Names was in bad faith. The Panel notes that the registration was immediately after the official opening of the Complainant’s hotel amidst widespread publicity. The registration of the second Domain Name, which included the word “hotel”, indicates that the First Respondent was thinking of hotels at the time. The First Respondent has not proffered any innocent explanation dispelling the inference which may legitimately be made that he registered the Domain Names with a view either to selling them to the Complainant or to profiting from their identity or confusing similarity to its mark.
The Panel also considers that the registration of the Domain Names on transfer to the Second and Third Respondents was in bad faith. The Panel is satisfied by the documentary evidence that it was carried out after the Complainant notified the Complaint to the First Respondent. The Second and Third Respondents are bound to have looked at the website maintained by the First Respondent and to have known as a result, if they did not know already, that the Domain Names incorporated the name of a famous hotel.
Finally, in the Panel’s view, the Domain Names have been and are being used in bad faith, intentionally to attract internet users to the Respondents’ websites for commercial gain, in the form of click-through commissions from sponsored links and/or fees for direct advertising, by creating a likelihood of confusion with the Complainant’s mark as to their source, sponsorship, affiliation or endorsement. This applies to the websites of all three Respondents. The case falls within paragraph 4(b)(iv) of the Policy.
The Panel concludes that the third requirement of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <burjalarab.com> and <burjalarabhotel.com>, be transferred to the Complainant.
Date: November 16, 2007