Complainant is Abu Dhabi Future Energy Company PJSC, Abu Dhabi, of United Arab Emirates (UAE), represented by Allen & Overy LLP, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).
Respondent is John Pepin, Woking, Surrey, of United Kingdom, appearing pro se.
The disputed domain names <masdarcity.com> and <masdarcity.net> are both registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2008. On October 15, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue. On October 16, 2008, Fabulous.com 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2008. The Response was filed with the Center by numerous email communications and in hard copy between November 6, 2008 and November 11, 2008. On December 22, 2008, Respondent filed a supplemental submission with the Center. Although this document does not provide reasons for the late date of its submission, the Panel has nevertheless considered the further arguments presented therein.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on November 25, 2008. 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 November 25, 2008, Respondent contacted the Center objecting to the appointment of the Panelist. Respondent stated that while Respondent had no basis to allege actual bias by the Panel, the appointment nonetheless did not, according to Respondent, have an appearance of impartiality to render the decision in this proceeding.
The Center re-examined the issue of the appointment of the Panelist and Respondent's objections, and reconfirmed the appointment. As described more fully below, the Panel agrees with the Center's determination and finds that the Panel was properly constituted.
Based on use of the MASDAR trademark since September 2006, Complainant submitted a number of applications for the MASDAR trademark in the UAE in June 2008, in thirteen classes, along with a similar number of applications for registration of the logo including the word “Masdar.”
The degree to which Complainant possesses trademark rights, including unregistered rights arising through its usage of the names “Masdar” or Masdar City,” is considered below.
Respondent registered the disputed domain name <masdarcity.com> on May 8, 2008 and <masdarcity.net> on May 13, 2008. Respondent also registered the domain name (not in dispute in this proceeding) <masdar.co.uk> on November 13, 2006, according to Whois records, as a “non-trading individual.”1
On April 16, 2007, Complainant caused to be registered the domain name <masdaruae.com>.
Complainant avers that it is a private company wholly-owned by the government of Abu Dhabi, incorporated in 2006 to develop and promote the “Masdar Initiative” (also known as the “Al Masdar Initiative” or “Masdar Project”). The Masdar Initiative is intended to be a landmark program to create a new framework for the development and promotion of world class, global scale, renewable energy and resource sustainability industries in Abu Dhabi. Its creation is planned to include the development of a Special Economic Zone in Abu Dhabi, which will eventually employ 50,000 people and occupy a large territory.
Complainant seeks transfer of the disputed domain names. In support of its legal contentions, Complainant alleges as follows:
(a) The Masdar Initiative was launched in March 2006 and attracted significant publicity.
(b) Since then Complainant entered into numerous high profile contracts with leading international companies including BP, Rio Tinto, General Electric, Shell, Conergy, Mitsubishi, Rolls-Royce, Total S.A., Mitsui and Fiat, to deliver the Masdar Initiative and that these contracts have attracted publicity in their own right; and that their negotiation and performance has developed the Complainant's goodwill and reputation in the MASDAR mark amongst its potential customers and industrial business partners worldwide.
(c) The MASDAR trademark has also been used consistently by Complainant in relation to its various activities since its launch, which have included:
(i) the establishment of the “Masdar Clean Tech Fund,” a $250 million green investment fund launched in September 2006 in conjunction with Credit Suisse and entrepreneur Robert Tchenguiz;
(ii) the launch of the “Masdar Institute of Science and Technology”, a postgraduate educational and research institute in collaboration with the Massachusetts Institute of Technology;
(iii) the launch of “Masdar City,” a carbon neutral and sustainable city, which was announced on May 8, 2007.
(d) Complainant has invested substantial time and money in promoting and developing the project, which has prompted very significant press coverage in international newspapers and news publications, including: the Financial Times, Business Week, the BBC, Reuters and CNN.
(e) By reason of Complainant's trade under the MASDAR mark and the substantial press coverage associated with, and goodwill attaching to, the Masdar Initiative since its launch in 2006, Complainant is the beneficiary of unregistered or common law trademark rights in the MASDAR trademark in multiple jurisdictions, including in the UAE, the UK and the US. When Complainant and others made various launch and public announcements, Complainant's unregistered rights in the mark MASDAR attached also to the term “Masdar City.”
(f) In addition to these unregistered or common law trademark rights, Complainant has over 20 trademark applications pending for the trademark MASDAR in the United Arab Emirates.
(g) Respondent's disputed domain names incorporate Complainant's MASDAR and MASDAR CITY marks in their entirety.
(h) The inclusion of a gTLD such as “.com” is irrelevant when determining whether a domain name is identical or similar to a trademark (citing Ticketmaster Corporation v. DiscoverNet,Inc., WIPO Case No. D2001-0252), and that therefore the disputed domain names are identical and/or confusingly similar to Complainant's marks.
(a) Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not apparently associated with the name “Masdar,” was not licensed or authorized by Complainants.
(b) Respondent would have no legitimate reason to be associated with the word “Masdar,” which in Arabic means “source.”
(c) Complainant's representatives wrote to Respondent on June 24, 2008, offering to pay Respondent's out of pocket expenses to transfer the domain names to Complainant. The same day that Respondent received the email offer, Respondent telephoned Complainant's authorized representative, refused to cooperate with Complainant's requests and claimed he was willing and prepared for a legal challenge. While Respondent did not demand money, he also did not explain any possible interest he might have had in the disputed domain names.
(d) The first of the disputed domain names <masdarcity.com> was registered by Respondent on May 8, 2008, the same day that the Masdar City development was announced and the second of the disputed domain names <masdarcity.net> was registered 5 days later. Respondent has also registered the <masdar.co.uk> domain name (not at issue in this proceeding). Complainant contends that it is to be inferred therefore that Respondent hoped to profit from Complainant's goodwill in the MASDAR and MASDAR CITY marks.
(a) Respondent is a serial cyber squatter, who, as research on the Internet indicates, has an “uncanny habit” of registering domain names similar to others' trademarks immediately after significant public announcements are made.
(b) Respondent's email address is associated with over 3,000 domain names; Respondent's postal address is associated with over 500 domain names; and Respondent's name is associated with over 800 domain names.
(c) Respondent and/or his apparent aliases/accomplices “SN Pepin” and “Kevin Reed” have been involved in at least 6 domain name dispute decisions (the Nominet dispute resolution panel in The Financial Times Limited v. Mr Kevin Reed, DRS 04214 found that “[i]t is clear that [Mr Kevin Reed] is in some way connected to SN Pepin and John Pepin who share the same address…”), and the “vast majority of the cases have gone against him.”
(d) Evidence of Respondent's state of mind upon registration may be inferred from his prior dealings and UDRP cases, including the registration of the domain names <thegreatdomainrobbery.co.uk> and designating “BuyThisDomainName” when registering domain names (citing the panel decision which so found, in Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402).
(e) Before Complainant contacted Respondent, the disputed domain names were used to generate pay-per-click advertising revenue. Once Complainant contacted Respondent, the websites were changed to include a disclaimer that the website is “under construction” and “has nothing whatsoever to do with an Emirates company called ADFEC nor is it connected with the website masdaruae.com.” Under UDRP decisions, such a disclaimer cannot, Complainant argues, cure bad faith, citing Estée Lauder Inc v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869.
(f) When contacted, Respondent did not seek to sell the domain names to Complainant. Complainant contends that this is due to Respondent's shrewdness as a cyber squatter and his knowledge that under certain circumstances, efforts by Respondent to sell the disputed domain names could be used against him as evidence of bad faith.
(g) In the three months after posting the disclaimer, Respondent has not changed the websites, which means they are not “under construction,” but rather that the disputed domain names “are simply parked awaiting a suitable payment (or an adverse finding from an administrative tribunal).”
(h) Respondent has also lobbied Nominet (the registry for “.uk” TLDs) respecting Respondent's view that offers to sell registered domain names, the sale of pay- per-click traffic and registration of large numbers of domain names should not be viewed as abusive behaviour.
(i) Complainant relies on all of the above to support its contention that Respondent is in the business of registering domain names that seek to cash in on the goodwill, reputation and trademark rights of others and is using the domain names in bad faith.
Respondent's lengthy response touches on a broad range of allegations which Respondent contends support his right to prevail.2
In a series of rejoinders to Complainant's contentions, Respondent denies that he is a cyber squatter. Respondent also generally denies that Complainants had trademark rights in the terms “Masdar” and “Masdar City” that pre-existed his disputed registrations.
Respondent describes entities unrelated to Complainant in both the Middle East and the United Kingdom which do business under the name “Masdar,” which he avers is also a generic term and popular family name. Therefore, he contends, Complainant lacks trademark rights and would be unsuccessful were they to apply for trademark protection in the United Kingdom. He also contends, as described below, that he himself acquired trademark rights in the name “Masdar.”
Respondent contends that Complainant did not begin using the term “Masdar City” until after Respondent registered websites using the term “Masdar City,” and that Respondent made prior registration of the domain name <masdar.co.uk> before Complainant announced its project. Respondent accepts that Complainant developed its project as the “Masdar Initiative” to develop a green city for a substantial period beginning in 2006, but that it did not use the “striking” phrase “Masdar City” until after he had registered the disputed domain names.
Respondent concedes that the “.com” suffix is irrelevant, however disputes “that the Respondent's use of MasdarCity is confusingly similar to the Complainants secondary use of the word “Masdar Initiative”.”
Respondent contends that he has registered various Arabic words as domain names and that he has developed trademark rights in the name “Masdar” for class 35, due to the parking of his domains with NameDrive, which served up advertisements on the websites.3 He contends that parking domains and serving advertisements are legitimate businesses and that the name “MasdarCity” was chosen “because of its meaning of ‘source' and as reference to CircuitCity.com website is intended to be a Source from which persons can Purchase goods.”[sic] By implication, Respondent argues that he is making legitimate use of “masdar” as a generic word to describe his business or product without intention to take advantage of Complainant's rights, citing Decal (Depositi Costieri Calliope) S.p.A. v Gregory Ricks, WIPO Case No. D2008-0585, and Velcro Industries B.V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, WIPO Case No. D2008-0864.
Respondent concedes that he lost a UDRP decision in 2000 but avers that there are no other UDRP cases in which he was involved. In support of this contention, and the fact that SN Pepin and Kevin Reed are not his aliases, Respondent produced statements signed by SN Pepin and Kevin Reed, who, according to the statements, are separate persons. Respondent concedes that those persons have at times used his address “against” his wishes, but that he “had nothing whatsoever to do with their own business.”
Respondent avers that Complainant omitted to describe an earlier attempt on April 29, 2008, through Complainant's PR Company, to purchase the <masdarcity.com> domain name from Respondent. Respondent avers that he responded in a phone conversation that the domain name was not for sale and that he had checked “the TM registry before registering the domain and that no trademark existed for either Masdar or MasdarCity.”
Responding to Complainant's allegations that the websites are not really “under construction,” Respondent claims that after putting up the disclaimers, he “went back recently to change the name servers and found the domain locked for this complaint so can do no more with the domain and is stuck.”
Respondent contends that he did not register or use the disputed domain names in bad faith and cites “the over 2 year's rights built up in the domain Masdar.co.uk.”
In his supplemental submission of December 22, 2008, the Respondent presents an argument based on the notion that geographical terms are not protected by the UDRP. He supports his argument, inter alia, by referring to the Overview of WIPO Panel decisions, and quotes the following consensus view: “The report of the Second WIPO Internet Domain Name Process declined to specifically extend protection to geographical terms under the UDRP. Some geographical terms however, can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark. Normally this would require the registration of the geographical term as a trademark.” The Respondent then further supports this view by making numerous references to WIPO panel decisions on geographical terms.
Respondent engaged in substantial communications with the Center and submitted extensive documentation with respect to his challenge to appointment of this Panel.4
Among other allegations, Respondent based his challenge to the appearance of impartiality on (1) the Panel's ownership of a law firm based in the United Arab Emirates; (2) the Panel's representation of companies “that sell goods and services to Complainant” and that the Panelist had been photographed at public events with persons in some way connected to Complainant; (3) the allegation that the Panel has carried out work for Complainant; and (4) that the Complainant carries on business in Abu Dhabi and the UAE generally.
The Center carefully considered Respondent's points and reviewed his many exhibits. The Center explained to Respondent that the Panelist was appointed in part because of his understanding of Arabic and that he was not a citizen of the UAE, but in fact shared British nationality with Respondent. The Center determined, therefore, that the appointment was fair in the circumstances and that the Center had no basis to question the Panel's independence and impartiality.5
The Panel here restates that it has not represented, advised or done work for Complainant or its principals.
In the Declaration of Impartiality, the Panel has sworn that “there are no facts or circumstances, past or present, or that could arise in the foreseeable future that need be disclosed as they might be of such a nature as to call in to question my independence in the eyes of one or both of the parties.” Although the wording of this declaration is routine in UDRP cases, the Panel strongly adheres to high ethical standards and does not make such declarations lightly.
In conclusion, Respondent has pointed to no facts, and the Panel is unaware of any rule regarding ethical obligations, independence or impartiality, which would suggest that the Panelist is inappropriate for the present proceeding.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). A complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Although the disputed domain names are not identical to Complainant's trademarks, the Panel agrees with Complainant and concludes that Respondent's domain names are confusingly similar to trademarks owned by Complainant.
A complainant may assert unregistered trademark rights by showing that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” may include the nature and extent of advertising, consumer surveys and media recognition. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
Complainant's annexes to the Complaint, consisting of many press clippings and on-line media coverage, demonstrate that the Masdar Initiative has been widely promoted internationally and within the Middle East. It has been clear since the inception of those public promotions and media coverage in 2006 that the Complainant's project would prominently include a “green city,” described in various terms also as a “Special Economic Zone” in Abu Dhabi. As described by Complainant, the project has garnered prominent, well publicized support through partnerships and participation by many of the world's leading universities, financial institutions and energy-sector companies.
The Panel concludes on the basis of the evidence before it, therefore, that the term “Masdar” has developed secondary meaning referring to Complainant's Initiative and project, and that therefore Complainant has proven the existence of unregistered trademark rights.6
Whether Complainant may have acquired trademark rights in the term “Masdar City” is another question, but one that does not need to be ruled upon in this summary proceeding.7 The use of the descriptive word “city” in connection with Complainant's mark still has relevance in this case, however, in evaluating the question of confusing similarity.
Many of the media articles refer to the Masdar Initiative as a “city.” Indeed it has become a well known practice in the UAE to create Specialized Economic Zones and planning initiatives around designated industry sectors (such as energy in the present instance); these are routinely described as “cities.”8
The Panel notes that a number of media reports annexed to the Complaint, from a variety of dates, describe the project as “Masdar City,” including an announcement in Al Bawaba dated February 8, 2008 which reads as follows: “Abu Dhabi's Masdar Initiative Breaks Ground on City of the Future. On February 9, 2008 at 6.30 p.m. in Abu Dhabi, United Arab Emirates the Masdar Initiative will break ground on Masdar City, the world's first zero-carbon, zero-waste, car-free city, powered entirely by renewable energy.” Complaint's Annex 4.
In this context the Panel has carefully reviewed the further argument presented by the Respondent regarding geographical terms and the handling of these in previous panel decisions. The Panel concludes that the argument is neither relevant nor applicable to the case at hand. The rationale is simple in this regard: the disputed domain names and the term Masdar as used by Complainant are not a geographical term. As noted above, the Masdar term is used by Complainant as the trademark and brand for a project that encompasses various defined concepts and plans. This term is not a reference to a so-called geographical area. While the word “city” has been used in connection with this term, this use denotes a project or a zone, which as explained has become common practice in the UAE. While this zone will be placed in a certain location, it is not the location that defines the term. The location is simply one of the aspects of the project that fall under the umbrella of the term Masdar, as used by Complainant.
Panels disregard the domain name suffix in evaluating confusing similarity, as conceded by Respondent. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The disputed domain names incorporate Complainant's MASDAR mark in its entirety. The addition of the descriptive word “city” to Complainant's MASDAR mark in the disputed domain names <masdarcity.com> and <masdarcity.net> does not reduce the confusion encountered by Internet users seeking to find information about Complainant's energy initiative in Abu Dhabi. Instead, the use of the term “city” simply adds to the confusion, given that a well-known feature of Complainant's Masdar Initiative is the development of a model, carbon neutral city.
The Panel concludes therefore that the addition of the descriptive term “city” does not negate the confusing similarity created by Respondent's complete inclusion of the MASDAR trademark in the disputed domain name. E.g., Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
Moreover, Respondent's late posting of a disclaimer on the site to which the disputed domain names resolve does not cure the initial confusion that leads the public to Respondent's site. E.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (“by the time consumers get to read the disclaimers, the domain name has already diverted them from the Complainant”).
The Panel concludes therefore that the disputed domain names are confusingly similar to Complainant's mark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
The Policy contains a non exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
Respondent contends that he planned to use the disputed domain names to market commercial goods. In any case, by using parking pages to take users to pay per click advertisements, the Panel finds that Respondent has been using Complainant's mark for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). SeeFat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. This eliminates the possibility that Respondent is making fair use or has no commercial intent.
Alleging that he has himself developed trademark rights through his prior use of <masdar.co.uk>, Respondent contends that he has legitimate interests in the disputed domain names <masdarcity.com> and <masdarcity.net>. Complainant does not directly address this issue.
However, a closer look at the record brings the legitimacy of Respondent's November 13, 2006 domain name registration into question. Consequently, as elaborated below, the Panel concludes that Respondent has no legitimate interests in the disputed domain names.
On May 8, 2008, the date that Complainant made a significant media “launch” of Masdar City, Respondent registered the first of the disputed <masdarcity.com> domain names. Earlier, on November 13, 2006, Complainant held a prominent reception in London, England, and Respondent the same day registered the <masdar.co.uk> registration (the basis for Respondent's claim to legitimate rights in the term “Masdar”).
The reception on November 13, 2006 launched the $250 million Masdar Clean Tech Fund, with statements by Abu Dhabi Crown Prince Shaikh Muhammad bin Zayed, the CEO of Credit Suisse EMEA, Complainant, and the head of Consensus Business Group (a UK company). APS Downstream Trends (January 1, 2007). Other activity announced that day included the Masdar Initiative's partnership with Imperial College of London, among others. Middle East Wire News (November 13, 2006). See also Complainant's Annex 4.
The Panel finds that the consistency and timing with which Respondent acted to register domain names containing Complainant's mark MASDAR on the dates of pivotal, broadly publicized announcements by Complainant could hardly be coincidence. Further, it does not appear, and Respondent does not contend, that he is commonly known by the disputed domain names.
The Panel is not, therefore, persuaded that Respondent has proven the existence of “rights or legitimate interests” in use of the domain name. Policy, paragraph 4(c).
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy provides a list of circumstances that suggest bad faith registration. That list is not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The facts strongly suggest, and the Panel therefore infers on a balance of probabilities, that Respondent had actual knowledge of Complainant's rights in the MASDAR mark, not only in May 2008, but as early as the November 13, 2006 <masdar.co.uk> domain name registration discussed above.9 The Panel therefore finds Respondent registered the disputed domain names in bad faith.
Under paragraph 4(b)(ii) of the Policy, bad faith registration and use may be demonstrated by registration of a 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 you have engaged in a pattern of such conduct.”
When contacted by Complainant prior to the instant proceedings, Respondent refused to transfer the confusingly similar disputed domain names to Complainant, which Respondent had registered in bad faith. According to Respondent, “During the telephone conversation I advised the solicitor that I was in the process of developing the domains to use for a project and that they had been used for over a year or more.” Response numbered paragraph 33. If Respondent has accurately reported his own telephone conversation with Complainant's counsel, Respondent clearly misrepresented his position and the duration of the registrations, which were made not “over a year or more” before, but based on the Whois records, only two months before.
In this proceeding, in his submissions, Respondent has also made inaccurate representations to the Panel about various subjects, including his involvement in prior UDRP proceedings (including the NAF proceeding last year in his own name cited below). On the basis of these misrepresentations, the Panel concludes that Respondent's stated intentions respecting the use and registration of the disputed domain names are inaccurate and lack credibility.
As noted by Complainant, Respondent has been involved in other domain name dispute proceedings which have evidenced bad intent in the registration and use of domain names confusingly similar to others' marks. For instance, on September 10, 2007, a UDRP Panel ordered transfer from Respondent of the disputed domain name <citismithbarney.com>.10 Citigroup Inc. And Citigroup Global Markets, Inc. v. John Pepin, NAF Case No. FA1059354.
That Respondent now represents that he was only involved in one UDRP case (Steven Rattner, supra (transfer)), and denies any meaningful connections to Kevin Reed and S N Pepin, who have been subject of several domain name dispute proceedings, is disingenuous at best.
In The Financial Times Limited v. Mr Kevin Reed, DRS 04214 (Nominet), the Panel found that “[i]t is clear that [Mr Kevin Reed] is in some way connected to SN Pepin and John Pepin who share the same address”). Notwithstanding Respondent's declarations to support the point that S N Pepin and Kevin Reed are separate individuals from Respondent, both of these individuals have been found to be connected with Respondent, and involved in dealings involving abusive domain name registration. See, e.g., F. Hoffmann-La Roche v. Kevin Reed, WIPO Case No. D2005-1255; Caesar's Entertainment Inc. v. S N Pepin, DRS 02582 (Nominet).
The Panel finds therefore that Respondent has engaged in a pattern of conduct involving the disregard of the trademark rights of others as referred to in Policy, paragraph 4(b)(ii).11
Respondent has sought to use the domain name “to intentionally attempt to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark,” which constitutes further evidence of use and registration in bad faith. Policy, paragraph 4(b)(iv).
The Panel concludes therefore that Respondent registered and is using the disputed domain name in bad faith and the Panel finds for Complainant on the third element of the Policy.
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, <masdarcity.com> and <masdarcity.net> be transferred to Complainant.
Nasser A. Khasawneh
Dated: December 22, 2008
1 Respondent's exhibit PEP6.
2 Respondent has well exceeded the 5,000 word limit set forth in Paragraph 10 of the Supplemental Rules. The Panel has nonetheless considered all of Respondent's submissions in their entirety, including the lengthy annexes. Respondent's use of make-weight arguments and attempts to get around word limits in summary domain name dispute proceedings have been noted elsewhere. By Design (UK) Limited t/a “mydeco” v. John Pepin, DRS 4843 (Nominet UK Dispute Resolution Service).
3 Whatever content may have appeared on the sites to which the disputed domain names routed from their inception, it should be noted that Respondent replaced that content with redirection to the disclaimer notice described by Complainants. Those notices also state that they were posted on June 24, 2008.
4 In this instance and in others, Respondent did not comply with the UDRP Rule requirement that prohibits parties from undertaking unilateral communications with the Center and the Panel.
5 When informed that the Center had concluded that the appointment of the Panel was appropriate, Respondent, among other things, wrote to the Center, in an email sent on November 26, 2008, stating that unless the Center reassigned the case to another panelist, Respondent would file legal actions against WIPO and other unspecified parties.
In response to this communication, among other things, the Center communicated to the Parties correspondence between the Center and the Panel regarding Respondent's challenge, in which the Panel had reiterated that it had no client relationships and had not provided legal consultancy in any form with either Complainant or Respondent at any time. The Panel also reiterated its sworn Declaration of Impartiality and noted that it would exercise its judgment as Panelist “in this case in an unbiased and neutral manner, and shall decide the case, as always, on the basis of the merit of the presented documentation and the arguments made by the Complainant and Respondent.”
6 That other parties may have trademark rights in the same term “Masdar” does not negate the existence of Complainant's rights, though it may affect the scope of the rights in disputes with third parties which are not at issue in this proceeding.
7 Respondent grounds much of its defense in the present action on its averment that Respondent registered “masdarcity” as a part of its domain names before Complainant acquired trademark rights to the term “Masdar City.” This defense is misdirected. First, the disputed domain names were registered only after the prominent ground breaking for Masdar City in the UAE, and other earlier publicity of project and Complainant's mark, as described further below. Second, it is well established that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.
8 Renowned examples include Dubai Internet City, Dubai Maritime City and Dubai Media City.
9 Even if Respondent did not actually know about Complainant's trademark rights, a growing consensus is emerging in UDRP decisions that those who, like Respondent, register large quantities of domain names have a duty of reasonable diligence to avoid trammelling on others' rights. See e.g., The Fragrance Foundation Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982 (citing, inter alia, mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (three member panel: “Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be wilfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”.)
10 Respondent in that case consented to transfer of the domain name based on a prominent trademark of the Complainant, representing that he was not aware that it was registered in his name. (Complainant had averred that Kevin Reed had transferred the disputed registration to Respondent.)
11 The Panel declines, however, to accept Complainant's invitation to rely on Respondent's submission of comments to Nominet regarding dispute resolution rules as evidence of Respondent's bad intentions.