WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rasmala plc, Rasmala Holdings Ltd., Rasmala Investment Bank Limited v. Registration Private, Domains By Proxy LLC / Taer Amro

Case No. D2018-2068

1. The Parties

The Complainants are Rasmala plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); Rasmala Holdings Limited of Dubai, United Arab Emirates (“UAE”); Rasmala Investment Bank Limited of Dubai, UAE, represented by Clyde & Co., UAE.

The Respondent is Registration Private, Domains By Proxy LLC of Scottsdale, Arizona, United States of America / Taer Amro of London, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <rasmalabank.com> 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 September 10, 2018. On September 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2018, the Registrar 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 September 13, 2018 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 amended Complaint on September 18, 2018.

The Center verified that the Complaint together with the amended 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 September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. The Response was filed with the Center on October 10, 2018. On October 15, 2018, the Complainant submitted an unsolicited supplemental filing to the Center.

The Center appointed Steven A. Maier as the sole panelist in this matter on October 31, 2018. 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. Procedural Matters

In the unsolicited supplemental filing referred to above, the Complainants seek permission to file further evidence and submissions in response to submissions made by the Respondent, which they say they could not reasonably have anticipated. The Panel determines, however, that no further submissions are necessary in this case.

Based on the relationship of the Complainant companies referred to below, the Panel is also satisfied that the three related Complainants have a specific common grievance against the Respondent and that it is equitable and procedurally efficient to permit all three entities to stand as the Complainants in these proceedings.

5. Factual Background

The Complainant Rasmala plc is a public limited company incorporated in England and Wales. The Complainant Rasmala Holdings Limited is a limited liability company incorporated in the Dubai International Financial Center (the “DIFC”) in the UAE. It is a wholly owned subsidiary of Rasmala PLC. The Complainant Rasmala Investment Bank Limited is also a limited liability company incorporated in the DIFC. It is a wholly owned subsidiary of Rasmala Holdings Limited.

The Complainants are part of an asset management and investment banking group which provides a range of investment services to institutional and private investors.

The Complainant Rasmala Holdings Limited is the owner of various registrations for a figurative trademark comprising an Arabic term above the word RASMALA in white on a blue background (the “Figurative Mark”). The Complainants say (and the Respondent does not dispute) that the Arabic term is also pronounced “rasmala”. The Complainant’s registrations include, for example, UAE trademark number 159313 for the Figurative Mark, registered on November 3, 2011 in Class 36 and European Union Trade Mark number 9175506 for the Figurative Mark, registered on December 6, 2010 in Class 36.

The disputed domain name was registered on May 27, 2017.

The disputed domain name has been used for the purposes of a website at “www.rasmalabank.com“ from which the Respondent has offered investment services.

6. Parties’ Contentions

A. Complainant

The Complainants contend that, in addition to their ownership of the Figurative Mark, they or their predecessors have consistently used a word mark RASMALA in connection with asset management and investment banking services since the inception of their business in 1999. They refer to industry awards that they won in 2008, 2009 and subsequently and provide details of their turnover and promotional expenditures in recent years. The Complainants state that in 2017 they had sales revenue in excess of USD 11 million, a marketing expense of USD 159,000 and approximately USD 1.7 billion of funds under management. They refer to their principal website at “www.rasmala.com”, to other domain names under their ownership which include the term “rasmala” and to their presence on social media. The Complainants contend that, by virtue of these matters, they have obtained substantial reputation and goodwill in the mark RASMALA which has become exclusively associated with their services in the Middle East and Europe in particular.

The Complainants submit that the disputed domain name is identical or confusingly similar to a trademark in which they have rights. In particular, they contend that the disputed domain name includes their mark RASMALA in its entirety and without any variation, and that the addition of the term “bank” fails to lessen the risk of confusion because it is simply descriptive of an area of business.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. They allege in particular that the Respondent has used the disputed domain name to impersonate the Complainants and to commit fraud. Concerning impersonation, the Complainants say that the Respondent’s website uses a logo that is similar to a logo that they use on their own website and that the visual design of the Respondent’s website is similar overall to theirs. The Complainants also allege that the Respondent has appropriated industry awards that were in fact won by the Complainants and has displayed the relevant awards on its website as though they were its own. The Complainant refers in particular to the MENA Fund Manager Performance Awards Winner 2017 for Sharia Fixed Income, awarded to the Rasmala Global Sukuk Fund, and to the Global ISF Investor MENA Awards 2015 Regional Fixed Income Manager of the Year awarded to the Complainant Rasmala Investment Bank Limited. The Complainant refers to other awards claimed by the Respondent which is says do not in fact exist.

The Complainants also allege that the Respondent has used the logo of the Dubai Financial Services Authority (the “DFSA”) in order falsely to represent that it is licensed or authorized by the DFSA. They complain of the Respondent’s extensive use of the names “Rasmala”, “Rasmala Bank” and “Rasmala Investment Bank” on the Respondent’s website and of its alleged use of social media accounts further to impersonate the Complainants. The Complainants exhibit an Alert issued by the DFSA dated March 11, 2018 warning of a fake website which impersonates the Complainants, which it identifies as a scam and a fraud. The Complainants also refer to a notice in similar terms on their own website.

The Complainants also allege that the Respondent’s website itself is fraudulent. They state that the Respondent is deceiving Internet users into believing they are dealing with the Complainants and are offering a “welcome bonus” of at least 30% of the funds invested in order to persuade Internet users to open investment accounts with it. The Complainants say that they have received numerous enquiries from members of the public who have been deceived in this way and exhibit examples of relevant emails.

The Complainants submit that the disputed domain name was registered and is being used in bad faith. The Complainants submit that the disputed domain name was registered using false contact details under the Registrant Organization “Rasmala Investment Bank Ltd” and with an address in London EC2. However, they say that there is no UK limited company under this name, and that the name is in any event the same as that of one of the Complainants. The Complainants contend that the disputed domain name was registered long after the Complainants commenced the use of the RASMALA mark and that it is obvious from the Respondent’s choice of the disputed domain name and its subsequent use that it registered the disputed domain name with the Complainants’ trademark in mind.

Concerning the Respondents’ use of the disputed domain name, the Complainants repeat their allegations that the Respondents have operaed a fraudulent website which is designed to impersonate the Complainants. They submit in particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.

The Complainants request a transfer of the disputed domain name to the Complainant Rasmala Investment Bank Limited.

B. Respondent

The Respondent states that it operates an online platform for trading currencies and stocks. It states that it chose the disputed domain name because the Arabic word “rasmala” is entirely generic and means “capitalization”. It states that this was an apt expression to describe the management of capital or funds and that the additional term “bank” also describes the Respondent’s activities. In particular, the Respondent states that, because the currencies traded on foreign exchange markets are issued by central banks, the Respondent itself operates like an investment bank.

The Respondent submits that it conducts its operations through two legitimate registered companies, Rasmala Public Company Limited, which is registered in the Marshall Islands, and Rasmala Tech Solutions Limited, which is registered in Bulgaria. The Respondent exhibits documentation to support both of these company registrations, namely a Marshall Islands Certificate of Registration dated May 26, 2017 and Bulgarian company documentation dated July 17, 2017. The Respondent states that the Marshall Islands company offers investment services and that the Bulgarian company operates financial and accounting services for the Marshall Islands company.

The Respondent submits that the Complainants cannot claim exclusivity in the generic term “rasmala” and that the Respondent’s own business is in a totally different field. In particular, the Respondent says that it operates a foreign exchange trading platform for individuals investing as little as USD 250, whereas the Complainants offer asset management, investment banking and real estate investment for institutions.

The Respondent states that, prior to the filing of the Complaint in these proceedings, it had spent approximately USD 500,000 on marketing activities to promote the disputed domain name (although it provides no documentary evidence in support of this).

The Respondent denies that it has attempted to impersonate the Complainant or that it has operated a fraudulent website and takes objection to these allegations on the part of the Complainant. The Respondent submits that its logo is totally different from that of the Complainants and that it operates in an entirely different field.

Concerning the DFSA Alert, the Respondent contends that this was procured by the Complainants and is effectively the same as the alert on the Complainants’ own website, which it says is defamatory. The Respondent also submits that the DFSA Alert is meaningless because “we are not supervised by DFSA, and we don’t even operate in a field that DFSA cover.”

The Respondent states that it is untrue that it has the Complainant’s industry awards on its website. It also states that the social media accounts of which the Complainants have complained do not belong to the Respondent.

The Respondent denies that it is attempting to mislead Internet users by creating any likelihood of confusion with the Complainant’s trademark. It repeats that its logo is different from that of the Complainants and states that it displays its own terms and conditions, company names and addresses and withdrawal and deposit documentation on its website, particulars of which it exhibits. The Respondent also also repeats that it is operating in a business area that is clearly different from that of the Complainants.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have established that they have rights in the Figurative Mark, of which the Panel accepts the predominant elements are the words RASMALA in Arabic and in English. The disputed domain name incorporates the term “rasmala” in full, together with the term “bank”, which the Panel finds to be a dictionary term descriptive of services, which is ineffective to distinguish the disputed domain name from the Complainant’s trademark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the Complainants claims to have had unregistered rights in the word mark RASMALA since 1999, the Respondent submits that the term “rasmala” is the Arabic word for “capitalization” and is generic in nature and denies that the Complainants can claim exclusivity in that term.

While the Complainants have provided little evidence of their historical use of the word mark RASMALA, the Panel has conducted a Google search against that term, time limited to May 27, 2017, being the date of registration of the disputed domain name. Based on the results of that search, it appears to the Panel that the Complainants had by that date obtained significant reputation in the name and mark RASMALA in connection with financial services in the Middle East and North Africa (“MENA”) region in particular and that there is no evidence of any other substantial use of the term “rasmala” in commerce by any other party. In the circumstances, the Panel finds that, to that the extent that the the term “rasmala” may be generic in nature, it had, at least by the date of registration of the disputed domain name, acquired a secondary meaning that was distinctive of the Complainants in the field of financial services.

Against this background, the Panel finds the Respondent’s explanation for its choice of the disputed domain name to be wholly unconvincing. While it states that the word “capitalization” is a general word relating to finance, it does not explain the particular relevance of that term to foreign exchange trading, which it claims is its only field of activity. Nor does it specifically explain its choice of an Arabic word. Concerning its inclusion of the term “bank”, the Panel finds that the Respondent’s explanation - that the foreign exchange which it trades is issued by central banks - not only incoherent, but also in conflict with its protestations that it operates in a field of financial activity that is entirely different from that of the Complainants.

In the circumstances, the Panel determines on balance that the Respondent is likely to have registered the disputed domain name in order to take advantage of the Complainants’ established goodwill in the mark RASMALA in the financial services sector. While the Panel notes the Respondent’s incorporation of companies in the Marshall Island and Bulgaria, it also notes its registration of the disputed domain name under the Company name “Rasmala Investment Bank Ltd” with a City of London address. In the light of these and other circumstances referred to below, the Panel is not of the view that the incorporation of the two companies amounts to evidence of demonstrable preparations by the Respondent to use the disputed domain name in connection with any bona fide offering of goods or services. Nor is the Panel of the view that the Respondent’s company name registrations of themselves give rise to rights or legitimate interests in the disputed domain name (see section 2.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)). There being no other evidence of rights or legitimate interests on the Respondent’s part, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

For the reasons set out above, the Panel finds that the Respondent is likely to have registered the disputed domain name in the knowledge of the Complainant’s mark RASMALA and with the intention of taking unfair advantage of the Complainant’s established goodwill in the financial services sector.

Concerning the Respondent’s use of the disputed domain name, the Respondent denies that its website is intended to cause confusion with the Complainant’s trademark or business or to trade off the Complainants’ goodwill, which the Respondent submits relates to a different segment of the financial service market. The Panel accepts the Respondent’s submission that its logo is different from that of the Complainants and that (save for the word RASMALA) it does not closely resemble the logo used by the Complainant. The Panel also accepts the Respondent’s submission that has used certain distinctive documentation and has identified the Marshall Islands and Bulgarian companies at certain locations on its site. However, the Panel finds that disputed domain name is inherently misleading for the reasons set out above and also finds that the Respondent has misleadingly included the Complainants’ 2015 and 2017 industry awards on its website. While the Respondent denies having done so, it appears from a search conducted by the Panel at “www.archive.org” that the relevant awards were present on the Respondent’s website on, for example, April 13, 2018. In the circumstances, both the Respondent’s use these awards and its denial that it had done so are clear evidence of bad faith. Similarly, while claiming that the DFSA Alert is meaningless because the Respondent is not regulated by the DFSA and does not operate in a field that it covers, the Panel notes that the Respondent prominently displays the official DFSA logo at the foot of its website.

Based on the above matters and the inherently misleading nature of the disputed domain name, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith.

8. 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 <rasmalabank.com> be transferred to the Complainant Rasmala Investment Bank Limited.

Steven A. Maier
Sole Panelist
Date: November 7, 2018