Complainant is IFA Hotels & Resorts KSCC, Dubai, United Arab Emirates, represented by Cedar White Bradley Consulting, United Arab Emirates.
Respondent is Buthaina Sharif, Manchester, United Kingdom of Great Britain and Northern Ireland, represented by Rouse & Co. International Limited, Dubai, United Arab Emirates.
The disputed domain names
<thebalquisresidence.net> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2008. On May 30, 2008, the Center transmitted by email to Godaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On May 30, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 27, 2008 (but see subsequent history infra).
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 9, 2008. 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.
On July 24, 2008, the Center on behalf of the Panel transmitted Administrative Procedural Order No.1 to the parties. An excerpted portion of that Order explains the relevant history of this proceeding:
“On July 22, 2008, the Panel completed its initial review of the case file in this matter, at that stage with Respondent having defaulted in submission of a Response. Nonetheless, the Panel had prepared certain questions directed to the Complainant regarding the legal and factual premises of its case. On July 23, 2008, and prior to the Center's transmission of the Panel's draft Administrative Order with those questions to the parties, the Panel received from the Center email notification of its receipt of a request from Respondent to file a late Response. The Panel requested and received from the Center the information and documentation provided by Respondent, and has reviewed that.
The Panel accepts Respondent's explanation for her request for late filing of her Response. An objective of proceedings under the Policy is to provide an opportunity for the parties to be heard.”
Respondent filed its Response on August 3, 2008, within the time period allotted by the Panel. The Panel did not find it necessary to request further submissions from the parties.
On August 15, 2008, the Center on behalf of the Panel transmitted Administrative Panel Order No. 2 to the parties granting a suspension of the procedure because the parties had agreed to a suspension to enable them to negotiate a settlement.
On September 16, 2008, a second suspension was issued at the parties' request.
On October 21, 2008, the Panel accepted due to exceptional circumstances to extend the suspension of the administrative proceeding. The last day to reply was October 28, 2008. The parties were advised that if no request to withhold the decision and terminate the matter on grounds of settlement was received by the latter date, the Panel's decision would be issued shortly thereafter. On October 29, 2008 the Center had not received any communication from the parties and the Panel subsequently authorized the Center to release the Panel's decision.
Complainant asserts that it filed an application for registration of the trademarks KINGDOM OF SHEBA and the BALQIS RESIDENCE in the trademark office of the United Arab Emirates (“UAE”) on November 28, 2006. Complainant further indicates that these applications have been opposed by Mr. Jaafar Mohammed Sharif and Mr. Farouq Jaafar Mohammed Sharif. Respondent “real party in interest” (see infra) confirms that it has opposed Complainant's applications for registration in the UAE. The aforesaid applications for registration remain disputed.
Complainant has submitted evidence of applications for trademark registration in a number of jurisdictions, mainly in countries of the Middle East. Complainant has provided evidence of registrations for the trademark BALQIS RESIDENCE and KINGDOM OF SHEBA in Lebanon, certificate of registration number 11058, dated May 21, 2007 and number 113022, dated September 28, 2007, respectively.1 (Complaint, Annex G). The summary of trademark activity provided by Complainant indicates that the first of these registrations is “pending publication”, although Complainant has not indicated the significance of that information. (Complaint Annex H). Complainant has also provided information and supporting documentation regarding registration of the BALQIS RESIDENCE and KINGDOM OF SHEBA word and stylized graphic trademarks in Saudi Arabia, with the earliest of those registrations on October 31, 2007 (Complaint, Annexes G & H).
Complainant also refers to two applications for Community Trade Marks (“CTM”) dated January 5, 2007. Registration of the word and design mark KINGDOM OF SHEBA with stylized graphic was registered by the OHIM on February 25, 2008 (trademark number 005636097), in International Classes (ICs) 16, 35, 36, 39, 41, 43 and 44, covering a variety of goods and services generally related to real estate, travel and entertainment. Complainant's application for CTM registration of BALQIS RESIDENCE with stylized graphic (trademark number 005636105) is pending. (Complaint, Annexes E & F)
Complainant has provided evidence of trademark applications submitted in other jurisdictions. However, there is no evidence of any trademark registration predating those listed above. For purposes of this proceeding, it will be adequate to limit discussion of trademark registration dates to those referenced above.
Complainant is the developer of the Kingdom of Sheba project on The Palm Jumeira at Dubai, UAE. The properties under development by Complainant include a luxury hotel (the “Fairmont Kingdom of Sheba”) and certain “freehold residences” at a development named the “Balqis Residence”. Complainant publicly announced the “launch” of the Kingdom of Sheba project on December 4, 2006 (Complaint, Annex D). According to its 2006 announcement, Complainant intends to invest over US$1 billion in the Kingdom of Sheba project by mid-2010. Complaint alleges that it has spent nearly $2 million marketing and advertising various aspects of the Kingdom of Sheba project.
Complainant alleges that it initiated a program to protect the proprietary names of this project with registration of four domain names on December 13, 2005 (i.e., <kingdomofsheba.net>, <kingdomofsheba.com>, <kingdomsheba.net> and <kingdomsheba.com>). Complainant registered the domain names “balqisresidence.net” and “balqiresidence.com” on December 12, 2006. Complainant has provided WHOIS database printouts confirming these dates of registration. (Complaint, Annex A). Complainant has not alleged or provided evidence of use of the aforesaid domain names in connection with active commercial Internet websites.
According to the Registrar's verification, Respondent “Buthaina Sharif” is registrant of the 55 disputed domain names. According to WHOIS database reports compiled by the Center, those domain names were registered on various dates commencing on December 12, 2006 (e.g., <kingdomofsabaa.com>) and concluding on January 25, 2007 (e.g., <balqisresort.net>).
Respondent has presented evidence in the form of a contract of employment that Buthaina Sharif is employed as Business Development Manager of Marib Holdings LLC, a design company established by her father under the laws of Abu Dhabi, the capital of UAE. That contract covers the period from January 1, 2006 to June 30, 2009. (Response, Annex 1, clause 4). Respondent alleges that she registered the disputed domain names on behalf of Marib Holdings LLC and at the direction of her father, Mr. Jaffar Sharif. Nothing on the record of this proceeding suggests otherwise. The Panel considers Marib Holdings LLC as the “real party in interest” Respondent in this proceeding. Further references to Respondent shall be deemed to include Buthaina Sharif as employee and Marib Holdings LLC as employer and principal.
Respondent is a tourism and real estate project investment company established to plan, design and develop the Mamlaqat Balqis Project (translated from Arabic as the “Kingdom of Balqis” project in English).2 The partners in Respondent include a member of the ruling family in Abu Dhabi. (Response, Annex 3) Respondent alleges that the aforesaid project was conceived in 2002, and has provided evidence in the form, inter alia, of written affirmation from collaborating businesses (Storm Consultants and The Image Maker) supporting the assertion that the planning for the Mamlaqat Balqis project has proceeded for several years. (Response, Annex 22). Respondent has provided a third-party design invoice dated October 28, 2006 for “Balqis” and “Marib” logos, accompanied by reproductions of certain logos. (Response, Annex 20). Respondent has also provided a business plan for the project prepared by The Image Maker showing collaboration with the Harvard University Peabody Museum (Response, Annex 4). Correspondence with the Peabody Museum submitted by Respondent is dated June 9, 2008. (Response, Annex 4) Respondent suggests that this correspondence reflects an advanced state of planning with respect to the aforesaid collaborative project, but it would be difficult to draw a conclusion regarding the conception date of the project by Marib Holdings based upon this correspondence.3
Respondent has provided substantial evidence that Mr. Jaffar Sharif is a well known and highly regarded architectural designer who has been directly involved in the planning and implementation of major construction projects in the Middle East, including in Bahrain, Kuwait and Oman (Response, Annex 2).
The 55 disputed domain names have been parked with the Registrar using one of its standard form linking park pages (a standard parking default format of the Registrar).
Respondent has provided extensive evidence that the term “Balqis” is commonly used throughout the Middle East to refer to the historical figure customarily referred to as the “Queen of Sheba”. (Response, Annex 6). Complainant has also indicated that “Balqis” is used in connection with its development project to signify that historical figure.
The term “Sheba” is commonly understood to refer to the territory ruled by the “Queen of Sheba”, an historical figure who plays a prominent role in the Old Testament account of the rule of King Solomon. Accounts of the Queen of Sheba, referred to by various names including “Balqis”, also appear in the Koran (or Quran). (Response, Annex 6). There is scholarly disagreement about the precise location of Sheba, but pinpointing the location of that territory is not material to this decision.
Other terms used in the disputed domain names are Roman script forms of Arabic words or references to geographic locations. For example, “arsh” in Arabic means “throne” in English, and “Mamlaqat” in Arabic means “kingdom” in English. (Complaint).
The Registration Agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it has rights in the trademarks BALQIS RESIDENCE and KINGDOM OF SHEBA as evidenced by registration in the European Community, as well as in Lebanon and Saudi Arabia.
Complainant argues that the 55 disputed domain names are identical or confusingly similar to its trademarks. Complainant has provided in table format a brief explanation regarding how the English and/or Arabic words used in the disputed domain names are identical or confusingly similar to its trademarks.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that, to the best of its knowledge, Respondent is a student in Manchester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) with no apparent legitimate connection to the disputed domain names, noting that as of May 27, 2008 all of the disputed domain names were “parked” by the Registrar. Complainant further asserts that Respondent would be infringing its rights in the trademarks BALQIS RESIDENCE and KINGDOM OF SHEBA by use of any of the disputed domain names in the United Kingdom.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith because it undertook registration one week following the public announcement of Complainant's development project to prevent Complainant from registering domain names relevant to that project or ultimately to sell the registrations to an interested party, the most obvious being the Complainant. Complainant further argues that Respondent may have intended to benefit commercially from diverting Internet traffic intended for Complainant to a project of Respondent, noting that at that stage it was not aware that Respondent was engaged in any kind of business activity.
Complainant finally argues that the timing of Respondent's registration makes clear that Respondent was “targeting” Complainant's project, and “It is submitted that such evidence of bad faith extends to the entire cluster of 55 domain names the subject of this proceeding that were registered at about the same time and that appear to have a common purpose.”
Complainant requests the Panel to direct the Registrar to transfer the 55 disputed domain names to Complainant.
Respondent asserts that this proceeding involves a complex trademark dispute that is not the type of subject matter intended for resolution under the Policy and should be determined by trademark registrars or courts. Respondent notes that it has opposed Complainant's applications for trademark registration in the UAE.
Respondent argues that certain of Complainant's trademark registrations in Arabic script accompanied by pictorial images are not relevant to this dispute because they are distinct from the English-language word-only disputed domain names.
Respondent argues that Complainant's trademark registrations in the European Community cover word and design combinations, and that because of the common descriptive nature of the words, Complainant would not have been able to secure word only registrations. Respondent argues that Complainant is using the trademark terms specifically to refer to particular real estate projects and that there is no risk of confusion in the marketplace from third parties using the common descriptive terms “Sheba” and “Balqis” in other contexts.
Respondent indicates that Complainant typically uses its alleged trademarks in combination with more distinctive terms associated with Complainant, notably “Fairmont” and also “IFA Hotels & Resorts”. Respondent alleges that the average consumer would understand “Kingdom of Sheba” and “Balqis” as used by Complainant only to refer to its themed resort and not as distinctive trademarks.
Respondent alleges that the terms “Sheba” and “Balqis” are commonly used by business operators, including by hotels and resorts, throughout the Middle East. Respondent argues that business enterprises are entitled to make fair descriptive use of these terms in connection with their businesses.
Respondent has provided in table form its brief explanation why the 55 disputed domain names are not identical or confusingly similar to the trademarks claimed by Complainant.
Respondent contends that it has rights or legitimate interests in the disputed domain names. Respondent argues that it had made serious preparations to use the disputed domain names in connection with its Mamlaqat Balqis project well before receiving notification of this dispute. Respondent states that it had no knowledge of Complainant's Fairmont Kingdom of Sheba Resort when it started registering domain names for the Mamlaqat Balqis project in November 2006. Respondent contends that it conceived the initial idea of its project in early 2002, as evidenced by Respondent's visit to archaeological sites in Yemen. Respondent notes that it commissioned logo designs for its project as evidenced by receipt, with invoices from October 2006.
Respondent states that it registered a number of domain names not using “Sheba” prior to any domain name or trademark registration by Complainant featuring the words “Balqis” or “Bilqis”. Respondent further states that it decided to register a number of common descriptive English domain names because it intended to attract visitors from around the world.
Respondent states that it met in the fall of 2007 with two consultancy firms regarding branding and business development for its Mamlaqat Balqis project. It has supplied letters from executives from each of those firms expressing the view that the presentations made by Respondent in the fall of 2007 reflected several years of preparation. Respondent indicates that its project will be 4-5 times larger than Complainant's development.
Respondent states that because the Mamlaquat Balqis project will be themed around the Queen of Sheba, “the respondent has a legitimate interest in being able to describe the theme of his project. He is only able to do so by using historical references and generic terms, such as Sheba, Balqis, kingdom, empire, temple, palace, city, throne, and sanctuary.”
Respondent indicates that it registered the disputed domain names in good faith for the legitimate purpose of creating a world-class museum and leisure resort based around the legend of the Queen of Sheba. Respondent asserts the preparations for this project were already underway in 2002, well in advance of the dates on which Complainant first registered the domain names and trademarks upon which the Complaint is based. Respondent further argues that Complainant has no exclusive rights to the common and descriptive terms “Sheba” and “Balqis”, nor the generic words used with them. Respondent concludes by stating, “If the Respondent had registered the Domain Names in bad faith, he would have made some attempt to derive commercial gain from them by now - for instance, by offering to sell them to the Complainant. Instead they are merely parked pending the public launch of the Mamlaqat Balqis project.”
Respondent requests the Panel to reject Complainant's request for an order to transfer to 55 disputed domain names.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Although Respondent did not initially receive notification of the Complaint and commencement of this proceeding due to a combination of an email address expiration on Respondent's side and Respondent's travel schedule, Respondent ultimately was made aware of the proceedings and has been able to file a detailed Response. The Panel is satisfied that the parties have had adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
The pleadings in this administrative proceeding - involving 55 disputed domain names - provide opportunity for elaboration by the Panel of a treatise-length discourse on assessment of confusing similarity between trademarks and domain names. The pleadings and evidence also provide opportunity for extended inquiry into application of the rules regarding rights and legitimate interests under the Policy.
However, when the Panel initially reviewed the Complaint, and prior to the late filing of the Response, the Panel concluded as a preliminary matter that Complainant's cause of action would fail “generally” (i.e., as to all disputed domain names) because of a problem involving sequencing or timing. The Response provides additional evidence supporting the Panel's preliminary conclusion. Because the matter of sequence or timing disposes of this proceeding in a relatively straightforward manner within the context of the issue of “bad faith”, there is no reason for the Panel to analyze and draw conclusions regarding other grounds of the Complaint. This is not necessary to resolving the ultimate, and in this case broad, issue before the Panel. In the interests of administrative economy, the Panel will address the issue of bad faith, referring as necessary to trademark rights.
It is common ground among the parties that Respondent registered all of the 55 disputed domain names in the period commencing on December 12, 2006 and ending on January 25, 2007. The earliest registration date for a trademark asserted by Complainant is for Lebanon, with registration date of May 21, 2007.
Complainant has not made an argument that it acquired common law trademark rights prior to May 21, 2007. Both of Complainant's applications for CTM registration at the OHIM in the European Community specifically indicate “No” in the space provided for whether the applied-for marks evidence “Acquired distinctiveness”. (Complaint, Annex E & F). The first of Complainant's registrations granted by OHIM, for the word and stylized graphic mark KINGDOM OF SHEBA, is dated February 25, 2008.
Although Complainant first registered four domain names using the terms “Kingdom of Sheba” in December 2005, Complainant has presented no evidence to support an argument, which it has not made, that these domain name registrations established trademark rights. In light of the fact that Complainant indicates that it publicly launched its “Kingdom of Sheba” project only in December 2006, there would be substantial obstacle to succeeding with such an argument, assuming first that a theoretical “locus” for such trademark rights was argued and established. (That is, trademark rights do not arise in vacuo. They are tied to national or regional jurisdictions.)
As a matter of general principle under the Policy, Respondent could not have acted to take unfair advantage of Complainant's rights in trademarks before those rights arose. A finding that Respondent registered and used the disputed domain names in bad faith presupposes that Complainant had trademark rights that could be unfairly exploited at the time of domain name registration. See, e.g., Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie/ Symbility, WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.
Prior to Respondent's request for the filing of a late Response, the Panel had intended to inquire of Complainant whether there was some legal or factual basis by which it would seek to exclude itself from the operation of the general principle set out above. (This is despite the fact that there was an obvious problem with the timing or sequencing of events from Complainant's standpoint, and Complainant should have addressed this directly in the Complaint.) There are some panel decisions under the Policy in which bad faith registration and use has been found notwithstanding that trademark rights had not been established at the time of domain name registration, as a limited exception to the general sequencing principle. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. See, also, obiter panel discussion in ExecuJet Holdings Ltd. v. Air Alpha America, Inc, WIPO Case No. D2002-0669.
However, upon review of the Response, the Panel has concluded that Respondent registered the disputed domain names to protect its own commercial interests, and not to take unfair advantage of Complainant's future interests, such that the facts of this proceeding do not justify an exception to the general principle. Respondent has provided substantial evidence that it is in the process of developing a large-scale commercial complex in the UAE for which it intends to make use of the disputed domain names. Whether and how Respondent ultimately is able to use the disputed domain names (e.g., for the purpose of marketing and promoting its commercial complex) will depend, inter alia, upon resolution of trademark proceedings before administrative bodies or courts in the UAE (and perhaps elsewhere). Respondent, on the evidence before the Panel, did not register the disputed domain names because it became aware of an opportunity to take unfair advantage of “future interests” of Complainant.
Accordingly, the Panel concludes that Respondent did not register and use the 55 disputed domain names in bad faith. As Complainant had no trademark rights at the time of Respondent's registration of those names, Respondent could not, in this case, unfairly exploit what Complainant did not possess. Without expressing an opinion as to whether it concurs with prior panel decisions finding a limited exception to the general sequencing rule requiring the establishment of trademark rights as a condition precedent to a finding of bad faith, the Panel determines that Respondent's conduct does not here provide Complainant with a sufficient basis for establishing bad faith conduct vis a vis Respondent.
In order to succeed in establishing abusive domain name registration and use under the Policy, Complainant must satisfy each of three elements (i.e., Complainant has rights in a trademark(s) identical or confusingly similar to the domain name(s), Respondent lacks rights or legitimate interests, and Respondent registered and used the domain name(s) in bad faith). Because Complainant has not demonstrated that Respondent registered and used the 55 disputed domain names in bad faith, Complainant's claim fails as to all 55 disputed domain names.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: October 28, 2008
1 It is of interest to note that the certificates of registration from the Department of Intellectual Property Protection in Lebanon contain the following statement:
“This certificate was issued according to the declaration of the applicant, or his agent, and at their responsibility. The Department of Intellectual Property Protection does not assume any responsibility thereof.” (Complaint, Annex G).
If the Lebanese trademark registrations were material to the outcome of this proceeding the Panel would seek clarification of the legal implications of this statement. However, these registrations do not materially influence the outcome. The Panel therefore does not need to draw any legal conclusions regarding the legal effect of these registrations and certifications.
2 Respondent has provided the “current trade license” of Marib Holdings LLC in Abu Dhabi as evidence of the partners participating in the enterprise. That current trade license is dated June 16, 2008. (Response, Annex 3). As such, it is evidence of the business structure of Marib Holdings, but not probative on the question when the Mamlaqat project was conceived.
3 Respondent has also provided passport information from 2002 regarding travel to Yemen by Jaffar Sharif said to be in connection with initial conceptualization of the Mamlaqat Balqis project. (Response, Annex 18).