WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dahabshiil Transfer Services Ltd. v. Kumi Yare / c/o DAHAB-SHIIL.COM
Case No. D2010-2261
1. The Parties
The Complainant is Dahabshiil Transfer Services Ltd., London, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Kumi Yare, Ileys Technology Inc., Mogadishu Banadir, Somalia and c/o DAHAB-SHIIL.COM, Vancouver, Washington State, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dahab-shiil.com> is registered with R&K Global Business Services, Inc. d/b/a 000Domains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000Domains.com a request for registrar verification in connection with the disputed domain name. On December 23, 2010, R&K Global Business Services, Inc. d/b/a 000Domains.com 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 6, 2011 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 amendment to the Complaint on January 11, 2011. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on January 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2011. No formal Response was received from the Respondent however, e-mails were received from the Respondent on January 15, 19, 2011 and February 9, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on February 17, 2011. 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 February 19, 2011 the Respondent sent two further emails to the Center which were forwarded to the Panel. The Panel has ignored these emails because the time for filing a Response had passed. The emails were unsolicited and in any event, their content seemed only marginally relevant to the issues to be decided.
4. Factual Background
The Complainant is a United Kingdom corporation founded in 1970. It is a major international financial organisation with 24,000 branches and agents licensed to use its trademark in some 144 countries.
It operates financial and money transfer services which are used by many international organizations, including the United Nations, Save the Children and Oxfam. It provides a lifeline for populations living in crisis regions such as the Horn of Africa.
The Complainant is recognised and regulated by United Kingdom financial regulatory authorities as an Authorised Payment Institution. It belongs to relevant trade bodies for the regulated money transfer business.
The Complainant owns a United Kingdom trademark for DAHABSHILL registered on August 19, 2005 in Class 36 for “financial services, money transfer services, banking, currency exchange, international”. It also owns a similar United States trademark filed on January 8, 2009. “Dahabshiil” is a Somalian phrase associated with the founder of the Complainant since at least 1970.
The disputed domain name was registered in October 2010. The Complainant gave the Respondent no rights to use its trademark in a domain name.
The Respondent is using the disputed domain name to access a website under the name “Dabashiil News Agency”. The website features the Complainant’s trademark and logo plus an advertisement for the Complainant which is a false link which does not connect to the Complainant’s genuine website ”www.dahabshiil.com”.
The website intimates that it is a news-based service operated by or on behalf of the Complainant. Some items on the website portray terrorists and/or information about terrorist groups.
On November 29, 2010, the Complainant’s lawyer wrote a “cease and desist” letter to the Registrant of the disputed domain name who at that stage was care of a Registrar in Vancouver, Canada. No reply was received.
In an email dated January 15, 2011 addressed to the Center after the Complaint had been served, the Respondent indicated inter alia that he considered the Complaint a threat or blackmail: that Dahabshiil was “one family name” and that other names similar to the disputed domain name would be registered: that Dahir Alasow, a radio and TV journalist was a “fearless commentator” who was apparently associated with the disputed domain name.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s trademark apart from the hyphen.
The Respondent has no rights or legitimate interests in the disputed domain name since the Complainant gave none and the Respondent has not relied on any of the defences in paragraph 4(c) of the Policy.
The Respondent registered and is using the disputed domain name in bad faith as can be inferred from the following:
a) the Respondent’s website features the Complainant’s mark in an unauthorized way which creates the false impression that the website was somehow approved or endorsed by the Complainant;
b) there is a false link in the Respondent’s website – purportedly to the Complainant’s website – which does not take the internet user to that website;
c) the unauthorized use of the mark misleadingly diverts customers away from the Complainant’s website and trades off the Complainant’s goodwill;
d) the Respondent’s website infers that a news service is operated by or reflects the views of the Complainant;
e) the Respondent’s website tarnishes the reputation of the Complainant as a reputable financial organisation by inferring a connection between the Complainant and terrorist organizations;
f) the lack of a response to the Complainant’s “cease and desist” letter;
g) the Respondent’s stated intention to register domain names similar to the disputed domain name.
The Respondent did not file a response but made the significant statements in emails as noted in the Factual Background.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s trademark apart from the hyphen. Technically, it is confusingly similar.
Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave no rights to the Respondent to use the trademark who has not filed a Response. The Respondent might have raised for the consideration of the Panel a defence under paragraph 4(c) of the Policy but has not done so. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Bad faith registration and use are easily inferred in this case. The Respondent must have known about the Complainant at the date of registration of the disputed domain name, given the prominence of the Complainant, particularly in the Horn of Africa.
All of the reasons advanced by the Complainant in the résumé of its submissions cited above are valid and are adopted by the Panel without the necessity of repetition.
The Panel considers, as most significant, the tarnishment of the Complainant’s mark by the possible connection in the Respondent’s website with terrorism.
Accordingly, the Complainant has established Paragraph 4(a)(iii) 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 name, <dahab-shiil.com> be transferred to the Complainant.
Sir Ian Barker
Dated: February 24, 2011