WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atölye Kostüm Tekstil San. Ve Tic. A.Ş. v. Emad Khushhal, Almatar
Case No. D2016-0749
1. The Parties
The Complainant is Atölye Kostüm Tekstil San. Ve Tic. A.Ş. of Istanbul, Turkey, represented by Aksu Teke, Turkey.
The Respondent is Emad Khushhal, Almatar, Best Dress Uniforms KSA of Makkah, Saudi Arabia, represented by Dimov Internet Law Consulting, Belgium.
2. The Domain Name and Registrar
The disputed domain name, <bestdressuniforms.com> (the "Domain Name"), is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2016. On April 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 15, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2016. The Response was filed with the Center on May 6, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 19, 2016. 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 Turkish-based company engaged in the design and manufacture of uniforms and corporate wear. Its clientele includes a number of well-known international hotel chains.
The Complainant undertakes promotion and sale of its textile products via its website connected to its domain name, <dressbestuniforms.com>, and has done so since October 19, 2006, the date of registration of that domain name.
The Complainant is the registered proprietor of a Turkish trade mark registration for a figurative mark comprising the words "dress best" in a prominent font followed by the words "uniforms & corporate wear" in a much smaller font. The mark was applied for under No. 2009/16950 on April 6, 2009, and registered on September 29, 2010, in classes 24 and 25.
Through an apparently associated Dubai, United Arab Emirates-based company named "Inter Costume DMCC", the Complainant relies upon trade mark registrations for DRESS BEST UNIFORMS & CORPORATE WEAR held in the name of that company in the United Arab Emirates and Qatar, which were applied for in 2012 and 2013 in classes 25 and 35.1
The Complainant has produced evidence to show that in March 2014, it was to expand its business "into [the United Arab Emirates], Saudi Arabia, Qatar." The journal article in question was dated March 9, 2014, and appeared in the online magazine "HotelierMiddleEast.com". The Complainant was referred to in the article as "Dress Best Uniforms".
The Respondent registered its company name, "Best Dress Uniforms" in Saudi Arabia on July 17, 2014.
The Domain Name was registered on September 17, 2015, and is connected to a website which indicates that it was "founded in 2013 as a company specializing in the design of high-end uniforms …". It claims a clientele similar to that claimed by the Complainant, but restricted to Saudi Arabia. Indeed, many of the clients appear also to be clients of the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to the Complainant's registered trade mark and calculated to cause confusion; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith. The Complainant produces screenshots of the Respondent's website as at April 14, 2016, featuring some images substantially identical to those of the Complainant.
B. Respondent
The Respondent denies the Complainant's contentions.
It denies that the Complainant's rights in its registered trade mark extend to the Domain Name. It observes that the Complainant's trade mark is a figurative mark and comprises ordinary dictionary words highly descriptive of the Complainant's business and is therefore of very narrow scope. It disputes any confusing similarity.
The Respondent claims rights and legitimate interests in respect of the Domain Name on the basis that it is using the Domain Name in relation to a bona fide business offering and that the Domain Name reflects its trading name. The Respondent produces a screenshot taken from the WayBackMachine and dated March 6, 2016, to demonstrate its bona fide use of the Domain Name.
The Respondent states that it was unaware of the Complainant prior to registration of the Domain Name and could not therefore have been targeting the Complainant when it registered the Domain Name. As to its use of the Domain Name it claims that it is a use consistent with and fairly descriptive of its line of business.
The Respondent contends that the Complaint should never have been launched and that the Complainant is guilty of Reverse Domain Name Hijacking.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name 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 in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
In coming to a decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely: "If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
B. Identical or Confusingly Similar
The Respondent rightly criticizes the Complainant for contending that the Domain Name is identical to the Complainant's trade mark. It is not possible for a domain name to be identical to a figurative trade mark. Additionally, the Complainant's trade mark features the prominent wording in a different word order and also features other words (see section 4 above).
The Respondent contends that the Complainant's trade mark is so descriptive that it is insufficient to form the basis for an attack on the Domain Name. In support of this argument the Respondent exhibits a copy of the Turkish Trade Mark Examination Guidelines, which run to 113 pages and comprise all bar about 14 pages of the Respondent's annexes. This annex was of no assistance to the Panel.
However, the fact is that the Complainant does have registered trade mark rights (see section 4 above) and by far the most prominent element of the trade mark in question are the words "dress best".
Apart from the generic Top-Level Domain identifier ".com", which may be ignored for this purpose, the Domain Name comprises the words "dress" and "best" (albeit in reverse order) and the word "uniforms". While the words are all dictionary words, the combination is an unusual one. The Complainant is engaged in the design and sale of uniforms and operates via its website connected to its <dressbestuniforms.com> domain name, which it registered in 2006.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It contends that the Respondent's business offering is not a bona fide offering sufficient to give rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy.
The Complainant contends that the Respondent registered the Domain Name in order to exploit the fame of the Complainant's brand. In support of this contention the Complainant draws attention to the unusual combination of words in the Domain Name which replicates to a significant degree the Complainant's domain name and features the same words ("best" and "dress") comprising the most prominent element of the Complainant's trade mark (albeit in reverse order). The Complainant also produces screenshots from the Respondent's website dated April 14, 2016, featuring images some of which appear to be substantially identical to images from the Complainant's website.
In the view of the Panel the Complainant has made out a prima facie case and the Respondent has a case to answer.
The Respondent has provided an answer.
Before it received any notice of the dispute, there is evidence of the Respondent's use of or preparations to use the Domain Name in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy). The Respondent points to its registration of its business name "Best Dress Uniforms" on July 17, 2014, and a screenshot taken from the WayBackMachine and dated March 6, 2016. It observes that it did not receive notice of the dispute until receipt of the communication from the Center on April 20, 2016 (see section 3 above). Referring again to its business name registration the Respondent contends that that entitles it to the benefit of paragraph 4(c)(ii) of the Policy in that it has been commonly known by the name "Best Dress Uniforms" since July 17, 2014.
There are problems associated with the Respondent's answer. First, the business name registration certificate is worded entirely in Arabic, which is not a language with which the Panel is familiar and is not the language of this administrative proceeding. Secondly, the date on which the Complaint was notified to the Complainant is not necessarily the date on which the Respondent can sensibly claim to be the relevant date, if it was the case that the Respondent was aware of the Complainant's basis for complaint prior to that date. The Complainant has produced evidence to show that the Respondent's website featured images from the Complainant's website, namely a series of screenshots dated April 14, 2016. Thirdly, while it is true that the screenshot from the Respondent's website produced by the Respondent and dated March 6, 2016, demonstrates that the website existed at that date, it is a selective screenshot. The Panel has visited the WayBackMachine to view the page in question and has found that other pages support contentions of the Complainant, namely that (a) much of the website was inactive; (b) the site featured links to a Canada Goose clothing website worded in Danish; (c) the illustrations under "Work Wear Products" were pictures of garden furniture. The Panel also noted other advertising links including a link to a dating site appearing on the Canada Goose links.2
Nowhere in the Response is there any answer to these contentions. They are contentions, which are clearly set out in the Complaint, but the Respondent has made no attempt to answer them. The Panel is left with the clear impression that as at March 6, 2016, the Respondent's website was, at best, no more than at a very early stage of design and that in presenting the "facts" as it has, the Respondent has set out to deceive the Panel. As at March 6, 2016, the Respondent's website was not, as claimed by the Respondent, being used to provide a bona fide service offering.
The earliest evidence of any trading by the Respondent is an article dated May 2, 2016, headed "Best Dress Uniforms, the Middle East's finest purveyor of uniforms, enters into agreement with textile giant". The date of the article is too late to be of any assistance to the Respondent and it appears to be an article which has been "placed" by the Respondent. Other than that article there is nothing before the Panel to suggest that at that date the Respondent was a "purveyor of uniforms" apart from bare assertions from the Respondent.
The state of the Respondent's website as at March 6, 2016, leaves the Panel in some considerable doubt as to the Respondent's claims to have as clients Intercontinental, Ritz Carlton, Fairmont, Raffles, Hyatt, Raddison Hotels and Resorts. Were that the case, the Respondent could so easily have produced independent supporting evidence to that effect and justified its claim to rights and legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
As the Panel has found, the Respondent has registered a domain name, the Domain Name, which is confusingly similar to the Complainant's trade mark and is a domain name in respect of which it has no rights or legitimate interests.
The Complainant has produced evidence to show that in March 2014 it was to expand its business "into [the United Arab Emirates], Saudi Arabia, Qatar." The journal article in question was dated March 9, 2014, and appeared in the online magazine "HotelierMiddleEast.com". The Complainant was referred to in the article as "Dress Best Uniforms". The Respondent apparently registered its company name, "Best Dress Uniforms", in Saudi Arabia on July 17, 2014.3
In the view of the Panel it is likely that the Respondent adopted its business name with knowledge of the Complainant and no doubt inspired by the publicity associated with the expansion of the Complainant's business into Saudi Arabia. In the view of the Panel it is inherently unlikely that the Respondent would have entered the field of uniform design and sale without having investigated the market.
The factors leading the Panel to this conclusion are (i) the timing of the claimed registration of the business name, around the time that the Complainant was announcing its expansion into the Respondent's geographical location under the name "Dress Best Uniforms"; (ii) the unusual combination of words appearing in those names; (iii) the failure of the Respondent to deal with the Complainant's contentions as to the Respondent's lack of bona fides;(iv) what appear to the Panel to be extravagant claims as to the nature and extent of the Respondent's business.
In the view of the Panel an "innocent" respondent faced with claims of plagiarism would have dealt directly with those claims, particularly having regard to the fact that those relating to the taking of the Complainant's images, on their face, indicate that the Respondent is indeed targeting the Complainant.
In the absence of a proper explanation from the Respondent and on the evidence before the Panel, the Panel finds on the balance of probabilities that the Respondent selected its name and the Domain Name with the Complainant firmly in mind and with a view to benefiting from the reputation and goodwill associated with the Complainant's trade mark.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking
There is nothing before the Panel to suggest that the Complainant's objective in launching this Complaint was anything other than a good faith aim to protect the reputation and goodwill associated with its trade mark.
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 Domain Name, <bestdressuniforms.com>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: June 9, 2016
1 However, the evidence in support of these claimed rights was insufficient and the Panel ignores them.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition("WIPO Overview 2.0"), paragraph 4.5 "A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at "www.archive.org") in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases."
3 As indicated above, the document evidencing this is worded entirely in Arabic which is not a language with which the Panel is familiar and is not the language of this administrative proceeding, so the Panel is unable to verify the claim.