WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MBC FZ - LLC v. Hassan Latif, MBC Business Center
Case No. D2016-1934
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 Hassan Latif, MBC Business Center of Dubai, United Arab Emirates, self-represented.
2. The Domain Name and Registrar
The disputed domain names, <mbcbusinesscenter.com> (the “First Domain Name”) and <mbcenters.com> (the “Second Domain Name”) (collectively, the “Domain Names”), are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint involving the First Domain Name was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2016. On September 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First Domain Name. On the same date, 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.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2016. The Response, an email to the Center, was filed with the Center before commencement of the proceedings on September 28, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 2, 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.
On November 3, 2016 the Complainant submitted a request to the Center by email requesting the addition of the Second Domain Name to this proceeding. On November 4, 2016, the Panel requested the Center to obtain registrar verification for the Second Domain Name from the concerned Registrar. On November 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Second Domain Name. By emails of that date and November 7, 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.
On November 7, 2016 the Panel issued Procedural Order No. 1, informing the Parties of the Panel’s acceptance of the Complainant’s request to add the Second Domain Name and giving the Respondent an opportunity to file a further Response. The Respondent acknowledged receipt of the Procedural Order No. 1 on November 9, 2016, but did not file any further Response.
4. Factual Background
The Complainant is a major Arab television and radio broadcaster based in Dubai. Its name is an acronym for “Middle East Broadcasting Center”. It was originally launched in London in 1991. It operates a website connected to its <mbc.net> domain name. The unchallenged evidence of the Complainant is that the website averages hits in the region of 17 million per month.
The Complainant itself or through its associated companies is the proprietor of numerous trade mark registrations of the acronym “MBC” in stylized form, including by way of example European Union Trade Mark Registration Number 6174619 for the MBC logo in colour red registered in classes 16, 35, 38 and 41 on July 24, 2008 (application filed August 7, 2007). The trade mark registrant is MBC IP FZ-LLC of the same address in Dubai as the Complainant.
The First Domain Name was registered on August 30, 2014, and at the time of filing of the Complaint it resolved to a website of “MBC Business Center”. At the time of this decision, the First Domain Name redirects to a website at “www.mbusiness.ae”, which is a website of “M Business Centers” with an address on the ninth floor of the Conrad Hotel in Dubai. The website advertises serviced private offices, conference facilities and support services.
The Second Domain Name was registered on October 18, 2016 and also redirects to the same website at “www.mbusiness.ae”.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s MBC trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Names; and that the Domain Names have been registered and are being used in bad faith.
The Response is in the form of an email from the Respondent to the Center on September 28, 2016 preceding the commencement of the proceedings on October 3, 2016. The Center informed the Respondent that he would be notified of the due date for Response in due course, but that if no further Response came in, the Center would treat the email as the Response. The Respondent’s email reads: “We are legally licensed from Dubai Economic Department and Dubai Chamber of Commerce. For reference please find attached trade license and certificate of Chamber of Commerce.”
The Trade Licence is in the name of MBC Business Centre and dated October 1, 2015, but the licence was issued not to the Respondent, but to one T. A. Abdulla. The address on the Trade Licence is different from the registrar-confirmed WhoIs information for the Domain Names. The Dubai Chamber of Commerce Certificate is a membership certificate dated November 8, 2015 in the name of MBC Business Centre, but features no reference to the Respondent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant itself or through its associated companies is the proprietor of a large number of trade mark registrations featuring the Complainant’s “MBC” acronym in stylized form. The Panel notes that the registration described under the factual background is restricted to the colour red and to that extent is different from the acronym as it appears in the Domain Names. The Panel does not find that the colour restriction is fatal to the Complainant’s claim to relevant trade mark rights for the purposes of paragraph 4(a)(i) of the Policy (on the basis that the acronym in any other colour is outside the scope of the Complainant’s rights). In the Panel’s view, on the basis of the Complainant’s unchallenged evidence, the fame of the Complainant built up over many years of extensive use in relation to its broadcasting services is sufficient to give rise to unregistered trade mark rights in respect of the acronym under the Policy.
The Domain Names both feature the Complainant’s MBC trade mark. The First Domain Name features in addition the words “business center” and the “.com” generic Top-Level Domain (“gTLD”) identifier. The Second Domain Name features in addition to the Complainant’s trade mark the word “enters” and the “.com” gTLD.
In neither case does the additional material overwhelm the distinctiveness of the Complainant’s MBC trade mark. Even though in the case of the Second Domain Name, it could readily be read as “MB centers” rather than “MBC enters”, the Panel finds that the Complainant’s trade mark is still recognizable within the Second Domain Name and, therefore, the Panel finds that the Domain Names are confusingly similar to the Complainant’s MBC trade mark.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interest in respect of the Domain Names. The Complainant contends that the Respondent, a resident of Dubai, cannot have adopted the Domain Names unaware of the existence of the Complainant, one of the principal television and radio broadcasters in the Middle East.
The Complainant contends that the Respondent adopted the Domain Names for no reason other than to take advantage of the Complainant’s reputation and goodwill in respect of its MBC name and trade mark for commercial gain. The Complainant contends that the Respondent would have been aware that there is no use to which the Domain Names could be put without causing confusion and infringing the Complainant’s rights. The Complainant states that it has no connection with the Respondent and has granted the Respondent no right to use its MBC trade mark.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent. The Respondent’s answer is that he is “legally licensed from Dubai Economic Department and Dubai Chamber of Commerce” and has produced certificates showing that a business with the name MBC Business Centre has the benefit of a Dubai Trade Licence.
However, there are problems with the Respondent’s explanation. The first is that the Trade Licence is not in his name, but is held in the name of one T. A. Abdulla. The Trade Licence features no reference to the Respondent; nor does the Certificate. It is conceivable that the Respondent is associated with the MBC Business Centre licensed entity, but there is no evidence before the Panel to that effect.
The address on the Trade Licence is different from the registrar-confirmed WhoIs information for the Domain Names and from the address identified in the website to which the Domain Names resolve. The record is void of any indication of a connection between the Respondent and T. A. Abdulla.
Another problem with the Respondent’s explanation is that the licensed entity is spelt differently. The Domain Names feature the American spelling of “center”, whereas the licensed entity is spelt in the English manner (Centre).
While at the time of the Complaint the First Domain Name resolved to a website of “MBC Business Center” purporting to offer “Luxury Serviced Offices”, after commencement of the proceeding, the Respondent directed the First Domain Name to another website, described below, using another name and acronym, calling into question the precise name of the Respondent to which he is entitled to claim rights or legitimate interests.
Moreover, the Respondent’s website to which the Domain Names currently resolve is at “www.mbusiness.ae”, which features at the top left of the home page as the Respondent’s trading name “M Business”1 (consistent with his “.ae” domain name, which is not the same as “MBC Business Center”, the substance of the First Domain Name at the second level). Furthermore, the Respondent’s acronym used on its website is not “MB” as featured at the second level of the Second Domain Name, but “MBCS” and the copyright notice at the foot of the home page reads: “MBCS Business Center © 2016 All Rights Reserved”.
The Response is sparse in the extreme (see section 5B above) and fails to feature the requisite certificate as to the completeness and accuracy of the information contained in it as required by paragraph 5(viii) of the Rules.
The Panel is not satisfied that the Respondent has established any rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
The unchallenged evidence of the Complainant is that its MBC trade mark is effectively a household name in Dubai. On that basis any subsequent use of that name in Dubai without the permission of the Complainant needs to be carefully scrutinized to see whether there is justification for it. In the absence of any justification, the likelihood will be that the user is seeking to take advantage of the Complainant’s trade mark.
As described above, the Respondent has failed to legitimize its claims, and the Respondent has now directed the First Domain Name to another website using the trade name “M Business” or “MBCS”. Moreover, the allegedly licensed entity, MBC Business Centre, spells its name differently and, as indicated above, there is nothing sufficiently concrete to tie the licensed entity in with the Respondent.
The Panel finds that on balance the Respondent registered the First Domain Name in bad faith and is using it to derive commercial gain on the back of the fame of the Complainant’s trade mark.
The registration of the Second Domain Name following the commencement of these proceedings indicates to the Panel that the Respondent recognized that the First Domain Name was vulnerable to an order for transfer under the Policy and registered the Second Domain Name hoping that it would avoid an order for transfer, while still maintaining the benefit of having the Complainant’s MBC trade mark at the forefront of the Second Domain Name. The Respondent’s position in relation to the Second Domain Name could be stronger in that on his website he does use the name M Business Centers, but nowhere on his website does he use the acronym “MB”. As indicated the acronym that he uses is “MBCS”. His principal name is “M Business” as appears from his principal web address at “www.mbusiness.ae” and in his logo where the word “centers” appears in significantly smaller print than “M Business”.
The Panel finds it more likely than not that the Respondent registered the Second Domain Name and has been using it with the primary intention of taking commercial advantage of the Complainant’s well-known MBC trade mark.
In the result the Panel finds that the Domain Names have been registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <mbcbusinesscenter.com> and <mbcenters.com>, be transferred to the Complainant.
Date: November 20, 2016
1 The name appears on the homepage under a logo in the form “M Business Centers”, but the word “Centers” appears below “M Business” and in much smaller print.