WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dahabshiil Transfer Services Limited v. Dahir Alasow, Waagacusub Media/ Domains by Proxy, Inc., Protected Domain Services
Case No. D2011-1356
1. The Parties
The Complainant is Dahabshiil Transfer Services Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Bird & Bird, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Dahir Alasow, Waagacusub Media of Brabant, Netherlands; Domains by Proxy, Inc. of Scottsdale, United States of America; Protected Domain Services of Denver, United States of America. The Respondent is appearing pro se.
2. The Domain Names and Registrars
The disputed domain name <dahabshiiltimes.com> is registered with GoDaddy.com, Inc.
The disputed domain name <dahabshiilworld.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2011. On August 9, 2011, the Center transmitted by email to GoDaddy.com, Inc. and Name.com LLC a request for registrar verification in connection with the disputed domain names. On August 10, 2011, Name.com LLC transmitted by email to the Center its verification response disclosing that the Respondent Dahir Alasow is listed as the registrant of the disputed domain name <dahabshiilworld.com> and Protected Domain Services is not the registrant of the disputed domain name <dahabshiilworld.com>, and providing the Respondent’s contact details. On August 11, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing that Domains by Proxy, Inc. named as the Respondent in the Complaint is not the registrant of the disputed domain name <dahabshiiltimes.com> and providing the registrant and contact information for the disputed domain name <dahabshiiltimes.com>. The Center sent an email communication to the Complainant on August 15, 2011 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 15, 2011. The Center has verified that the Complaint together with the amended Complaint satisfy 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 proceeding commenced on August 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2011. The Respondent did not submit any response by that due date. Accordingly, the Center notified the parties of the Respondent’s default on September 6, 2011. The Center received email communications from the Respondent on September 8, 2011, of which the Center acknowledged receipt. The Center was made aware of the Respondent's email communication dated August 15, 2011 (the Respondent having apparently made an error in the Center’s email address) by the Complainant in its email communication to the Center dated September 9, 2011, both of which the Center acknowledged receipt. The Center received email communications from the Respondent on September 10, 2011 and September 11, 2011, both of which the Center acknowledged receipt.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 14, 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.
4. Factual Background
The Complainant is a company incorporated in the United Kingdom and the owner of several registrations for the trade mark DAHABSHIIL (the “Trade Mark”), including a registration in the United Kingdom registered on August 19, 2005, and an international registration registered on January 8, 2009.
The Respondent Dahir Alasow appears to be an individual apparently with an address in the Netherlands.
The Respondent Waagacusub Media appears to be an entity apparently with an address in the Netherlands.
The disputed domain names were both registered on January 6, 2011.
5. Parties’ Contentions
The Complainant made submissions as follows.
The Complainant was founded in 1970 and is an international financial organisation. It employs more than 2,000 people and has 24,000 branches worldwide, and has licensed agents in approximately 144 countries.
The Complainant’s customers are mainly Somalis who live inside and outside of Somalia and Somali speaking countries. The Complainant is an internationally recognised and respected business. It’s financial and money transfer services are used by many international organisations and agencies including the United Nations, Save the Children and Oxfam.
The disputed domain names are confusingly similar to the Trade Mark as they contain the Trade Mark in its entirety and this is the dominant and distinctive element of the disputed domain names. The suffixes “times” and “world” are commonly used terms and lack distinctive character.
Both of the disputed domain names are resolved to websites that are substantially identical (the “Websites”). The Websites purport to be news reporting websites operating under the name “Dahabshiil News Agency”.
The Respondent is not commonly known under the disputed domain names and does not have any legitimate trade mark rights in respect of the disputed domain names.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain names. The Respondent is not making a bona fide offering of goods or services under the disputed domain names.
In registering the disputed domain names comprising the Trade Mark, the Respondent has registered and is using the disputed domain names in bad faith. The Respondent is using the disputed domains name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Websites.
As the Websites prominently feature pictures of terrorists and information about terrorist groups, the Respondent is also using the disputed domain names to tarnish the reputation of the Complainant as a reputable financial organisation by inferring a connection between the Complainant and terrorist organisations.
The Respondent did not file a Response.
Notwithstanding the Respondent’s failure to file a Response, the Panel has considered the emails sent to the Center by the Respondent Dahir Alasow after the deadline for filing a Response had expired. The Respondent Dahir Alasow first claimed that he and his legal advisers were on vacation. The Respondent Dahir Alasow subsequently made various allegations, including that he is descended from the Somali royal family, that “Dahabshiil” is his surname and that “Dahabshiil” means goldsmith.
Paragraph 5(d) of the Rules provides that, at the request of the Respondent, the Center may, in exceptional cases, extend the period of time for the filing of the Response. The period may also be extended by written agreement between the parties, provided the agreement is approved by the Center. There has been no such request or agreement in respect of this proceeding.
Paragraph 5(e) of the Rules provides that, if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
In all the circumstances, the Panel finds that no exceptional circumstances have been made out for a departure from the normal rule that strict compliance with the deadline for filing the Response is required. The Panel had therefore decided the dispute based upon the Complaint. The Panel would however note that, even if it had been minded to accept the late filing of submissions by the Respondent, the submissions are not convincing and would not have been sufficient to overturn its decision in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain names by several years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Both of the disputed domain names contain the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive words “times” and “world” does not serve to distinguish the disputed domain names from the Trade Mark.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden of production is thus on the Respondent to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The evidence suggests the Websites appear to be used by the Respondent in respect of various types of news reporting services. In view also of the Panel’s findings below in respect of bad faith, the Panel finds the use of the Trade Mark in this manner without the authorisation of the Complainant does not give rise to any rights or legitimate interests in the disputed domain names on the part of the Respondent.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. As previously noted under paragraph 5.B above, the Panel finds the Respondent’s belated submissions and unsupported claims to be unconvincing in the circumstances. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In registering and using the disputed domain names the Respondent has clearly used the Complainant’s Trade Mark in order to attract Internet users to the Websites, by creating a likelihood of confusion with the Trade Mark. The Panel finds that, in doing so, the Respondent’s likely motive was to capitalize on the good will of the Complainant’s Trade Mark. The Panel finds use by the Respondent of the Trade Mark in respect of what appear to be various types of news reporting services relating to Somalia, East Africa and the Somalian diaspora is an indicia of bad faith, given the Trade Mark’s notoriety amongst the Somali community worldwide.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
As the Panel has made a finding of bad faith under paragraph 4(b)(iv) of the Policy, it is not necessary to consider the further allegations of the Complainant that the disputed domain names have been used to tarnish the reputation of the Complainant. The Panel does however find these allegations somewhat far-fetched. Having reviewed the evidence, the Panel would suggest it is most unlikely the mere fact of reporting news relating to terrorist activities on the Websites would lead members of the public to draw the inference that the Complainant is in some way connected with terrorist activities or organisations.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <dahabshiiltimes.com> and <dahabshiilworld.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: September 28, 2011