WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MBC FZ - LLC v. Khalid Alahmari
Case No. D2015-0061
1. The Parties
The Complainant is MBC FZ – LLC of Dubai, United Arab Emirates, represented by Al Tamimi & Company, United Arab Emirates.
The Respondent is Khalid Alahmari of Jeddah, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <mbcprosports.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2015. On January 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2015, the Registrar 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 the Respondent of the Complaint, and the proceedings commenced on January 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default February 18, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on February 26, 2015. 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 large and well-known television broadcaster featuring content dedicated to Arab audiences. Founded initially in London in 1991 and headquartered in Dubai since 2002,1 the operations of the Complainant and its affiliated companies (collectively referred to as the “MBC Group”) include numerous television channels, radio stations and online platforms providing information and entertainment. The Complainant’s television channels reach over 90 million viewers. This includes a network of television channels, the MBC Pro Sports Network, launched by the Complainant on August 7, 2014.
The MBC mark is the Complainant’s “house” mark. The Complainant owns registrations for more than 200 MBC or MBC-formative marks in over 40 countries and jurisdictions in the Middle East and Europe, and the MBC house mark has been used and promoted in the Middle East since as early as 1991. The Complainant has obtained trademark registrations for MBC PRO SPORTS in the United Arab Emirates and Saudi Arabia, which were filed on August 5, 2014 and August 10, 2014, respectively. Additionally, the Complainant owns two Community Trademark (CTM) registrations for MBC PRO SPORTS, issued on January 28, 2015, and has pending applications to register MBC PRO SPORTS in a number of countries.
The disputed domain name <mbcprosports.org> was registered on August 15, 2014, approximately a week after the Complainant’s launch of the MBC Pro Sports Network. The dispute domain name currently resolves to the Respondent’s website, on which the disputed domain name is offered for sale. Also featured on the Respondent’s website are hyperlinks relating to downloads for streaming television and video capture and conversion.
5. Parties’ Contentions
A. Complainant
The Complainant describes itself as the Arab world’s largest television broadcaster, and a pioneering satellite broadcaster in the Middle East best known for its provision of world class entertainment and information dedicated to Arab audiences. The Complainant explains that it operates numerous television channels, including seven (7) HD channels, in the Middle East and North Africa region (MENA) and beyond. According to the Complainant, its website at “www.mbc.net” receives millions of hits each month, attesting to the reputation and renown of the MBC brand.
The Complainant submits that it has registered or has pending in numerous countries applications respecting a substantial number of marks comprised of or containing the words “MBC Pro Sports.” The Complainant further asserts that it has extensive trademark protection for its MBC house mark, incorporated in the MBC PRO SPORTS mark. The marks cover predominantly goods and services including those in classes 16, 25, 35, 38 and 41. The Complainant submits annexes providing details of these marks, including a selection of the relevant registration certificates. The Complainant represents that it advertises its services across a broad range of media, including print, television, and radio throughout the Middle East and international media including global publishers such as MSN, Yahoo, YouTube, and Facebook. According to the Complainant, its advertising expenditures exceed USD 2.5 billion annually.
Against this backdrop, the Complainant turns to the MBC Pro Sports Network, which the Complainant indicates was launched “to great fanfare” on August 7, 2014. The Complainant explains that the MBC Pro Sports Network aims among other goals to contribute to the advancement of Saudi football, providing extensive and complete coverage of some 240 Saudi Premier League games per season, accompanied by shows providing commentary and analysis involving media and sports personalities. The Complainant notes that the disputed domain name was registered on August 15, 2014, within days of the launch of the MBC Pro Sports Network.
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant’s extensive folio of MBC marks, including the MBC PRO SPORTS mark. The Complainant asserts that the MBC PRO SPORTS mark is a coined or invented name, and that the disputed domain name differs from the MBC PRO SPORTS mark only by the appending of the “.org” generic Top-Level Domain (gTLD), and the stylized format of the MBC marks. The Complainant submits these “marginal differences” do not serve to distinguish the disputed domain name from the Complainant’s marks. Further, the Complainant contends that the disputed domain name is not one a trader would legitimately choose unless trying to create a false association with MBC.
The Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has no authority to use the Complainant’s marks for any purpose, that the Respondent has not been commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Complainant asserts it is beyond dispute that the Respondent registered and is using the disputed domain name in order to create Internet user confusion, diverting Internet users to the Respondent’s website at the expense of the Complainant, and solely for the Respondent’s pecuniary gain. The Complainant maintains that such use of the disputed domain name by the Respondent cannot be characterized as use in connection with the bona fide offering of goods or services
The Complainant contends that the Respondent’s registration and use of the disputed domain name is in bad faith within the meaning of the Policy. According to the Complainant, the Respondent’s bad faith intent is evidenced by the registration of the disputed domain name within days of the Complainant’s launch of its MBC Pro Sports Network. The Complainant submits that the Respondent was aware of the Complainant’s rights in MBC PRO SPORTS when registering the disputed domain name, and that the Respondent beyond question was aware of the Complainant’s well-known MBC house mark, used extensively by the Complainant in the Middle East since 1991. The Complainant submits that no plausible reason exists for the Respondent’s selection of a domain name appropriating the Complainant’s MBC and MBC PRO SPORTS marks other than to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to sponsorship, affiliation, or endorsement respecting the Respondent’s website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s MBC PRO SPORTS mark and confusingly similar to the Complainant’s MBC mark, in both of which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is identical and confusingly similar to the Complainant’s MBC PRO SPORTS mark and MBC mark, respectively, for purposes of the Policy. Both of the Complainant’s marks are incorporated in their entirety in the disputed domain name. Although the gTLD may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that appropriates the Complainant’s MBC and MBC PRO SPORTS marks. The Respondent is using the disputed domain name to attract Internet users to the Respondent’s website, where the disputed domain name is offered for sale, and links are provided to various downloads relating to streaming television and video capture and conversion.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s marks through the creation of Internet user confusion. Internet users could easily expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant’s marks, and the Panel finds that the Respondent has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. While the Panel notes that the registrations for the MBC PRO SPORTS mark post-date the registration of the disputed domain name, the circumstances reflected in the record are convincing that the Respondent knew of and was attempting to capitalize on the Complainant’s existing or prospective rights in this mark. Moreover, the record reflects that the Complainant has operated continuously in the Middle East since 1991 under its MBC brand, which is well-known and is the subject of numerous prior registrations. The Panel thus concludes that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain name.
In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. As the Panel has noted earlier in this decision, the Respondent is using the disputed domain name, which is comprised of the Complainant’s marks, to attract Internet users to the Respondent’s website. On that website the disputed domain name is offered for sale, and links are provided to various downloads relating to streaming television and video capture and conversion. In light of the foregoing, the record amply reflects that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mbcprosports.org> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 12, 2015
1 MBC is an acronym for “Middle East Broadcasting Center”.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.