WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Middle East Broadcasting Center (MBC) FZ LLC v. My Flix

Case No. D2021-1567

1. The Parties

The Complainant is Middle East Broadcasting Center (MBC) FZ LLC, United Arab Emirates (“UAE”), represented by Clairmont Novus Avocats, France.

The Respondent is My Flix, Egypt.

2. The Domain Names and Registrar

The disputed domain names <shahid4u.net>, <shahid4u.one>, <shahid4u.onl>, and <shahid4u.ws> (the “Domain Names”) are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 2021, 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 May 19, 2021.

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 June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondent sent an informal communication on June 11, 2021. The Center informed the Parties of its commencement of Panel appointment process on June 23, 2021.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 1, 2021. 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, founded in 1991 in London, United Kingdom, is a limited liability company currently registered in Dubai, UAE, and headquartered in Dubai Media City. It is an audiovisual group specialized in the acquisition, production, and broadcasting of films and information and entertainment programs for the UAE region and also for distribution in North Africa, Europe, and the Americas. The Complainant operates satellite television channels and a video-on-demand service, SHAHID, in both free and subscription versions. (“shahid” may be translated as “watch” or “witness” in English, according to the Complainant’s filings with the United States Patent and Trademark Office.)

SHAHID was launched in 2008 and is advertised as “the world’s leading Arabic streaming platform”. According to the Wikipedia article about the Shahid streaming platform, “[m]ore than 27 million unique monthly users were reported by the end of Ramadan 2019.” The same source notes that the SHAHID mobile app has been available since 2012 and quickly became a leading app in the Middle East and North Africa market. The SHAHID customer base grew significantly with international marketing around a rebranding campaign launched in January 2020, and the SHAHID app is now embedded in several manufacturers’ smart televisions.

The Complainant has held the domain name <shahid.net> since March 2000 and has several domain names incorporating the “shahid” string. It currently operates a principal website, in Arabic, at “www.shahid.mbc.net”.

The Complainant holds numerous trademark registrations incorporating SHAHID in Latin and / or Arabic script, typically as the prominent textual element of a combined mark, including the following:

The the Domain Names were registered by the Respondent My Flix as follows:

The Respondent lists a postal address in a city near Alexandria, Egypt, and a Gmail email address.

The Domain Names all resolve to an Arabic-language website (the “Respondent’s website”) that advertises downloadable films and television shows, as well as music, all available for download by creating an account. Many of the films and television series appear to be dubbed or captioned in Arabic. The Respondent’s website does not clearly identify the site operator and redirects on some occasions to a Dutch download site. At least some browsers and security software display malware alerts to those using the Respondent’s website. According to the Complainant, the advertised downloads include copyrighted works for which the Complainant has exclusive reproduction or broadcast rights.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names are all confusingly similar to its registered SHAHID trademarks.

The Complainant states that it has not given the Respondent permission to use those marks in the Domain Names and that there is no evidence that the Respondent has been known by a corresponding name or has relevant rights or legitimate interests.

The Complainant argues for a finding of bad faith as follows:

“In addition, it is implausible that Respondent was unaware of Complainant when registering the Litigious Domain Names. Given Complainant’s renown worldwide, especially in MENA [Middle East and North Africa], and the nature of the Litigious Domain Names, Respondent could not have chosen the Litigious Domain Names for any reason other than to deliberately cause confusion for Internet users to capitalize on or otherwise take unfair advantage of Complainants rights, goodwill and reputation, which constitutes bad faith.”

B. Respondent

The Respondent did not provide a formal Response but sent an email dated June 11, 2021, arguing as follows:

“We (shahid4u)
This is an abbreviation of the word (shahid for you)
This is one word that is not divided into (shahid) and (4u), as the complainant said ‘shahid4u’
in the Arab world means watching and we are site of watching online ‘shahid’ Also, the word
Example: Be in sport and sky sport. There is a common word ‘sport’ which means a sporting activity. Does this mean that he is impersonating the trade name?

Hope you understand what I mean
Therefore, they are not entitled to request a suspension of my domains”

The Respondent’s email is not a formal Response accompanied by the required certification of completeness and accuracy (see Rules, paragraph 5(viii)), and this must be taken into account in weighing its credibility. Nevertheless, the Panel accepts that it is an effort to communicate an assertion that the Respondent intended to use the phrase “shahid4u” in the Domain Names in a dictionary sense rather than as a reference to the Complainant’s trademark.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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 and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant holds trademark registrations with the textual element including SHAHID in Latin letters and / or the transliterated equivalent in Arabic script. (Panels normally find that translations or transliterations are identical or confusingly similar for purposes of standing under the Policy; see id., section 1.14.) The Domain Names all incorporate the mark SHAHID in its entirety and add the characters “4u”, commonly used to abbreviate the phrase “for you”. The addition of such phrase does not prevent a finding of confusing similarity. See id., section 1.8. As usual, the generic Top-Level Domains (“gTLDs”) “.net”, “.one”, and “.onl”, and the Western Samoa country code Top-Level Domain (“ccTLD”) “.ws” (all of which are subject to the Policy), are disregarded as a standard registration requirement. See id. section 1.11.2.

Accordingly, the Panel finds that all four Domain Names are confusingly similar to the Complainant’s registered SHAHID trademarks and concludes that the Complaint satisfies the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the 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) that 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its well-known SHAHID marks, and the Respondent’s use of each of the Domain Names for a website competing with the Complainant and offering Arabic-translated media content for which it is undisputed that the Complainant has exclusive distribution rights. This does not indicate a bona fide commercial activity or noncommercial fair use, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests.

The Respondent has made only a bald assertion of using the Domain Names for their dictionary sense of providing content to “watch”. As the Respondent does not deny awareness of the Complainant’s well-established marks or counter the Complainant’s claims of unlawful content distribution, the Panel finds that the Respondent has not met its burden on this element and concludes that, more likely than not, the Respondent selected the Domain Names for their trademark rather than descriptive value, using them to compete directly with the Complainant via pirated media content. See WIPO Overview 3.0, section 2.10.1 (“In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”)

The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Respondent does not deny prior awareness of the Complainant and its SHAHID mark, and the record shows that the mark is well known in the Arabic-speaking entertainment market targeted by the Respondent’s website. The Respondent’s website offers for download many of the same Arabic-translated international films and television programs offered by the Complainant’s SHAHID streaming service (pirated, according to the Complainant). The Domain Names appear to be designed to misdirect Internet users to the Respondent’s website for commercial gain, consistent with the example of bad faith in the Policy, paragraph 4(b).

The Respondent has not offered a credible explanation for using the Complainant’s mark to compete with it in the same market for Arabic translated entertainment media. Moreover, there are other indicia of bad faith, such as the lack of proper identification of the Respondent on its website, the indications of copyright violations and possible malware, and the Respondent’s failure to offer a full Response to the Complainant’s substantive arguments.

The Panel finds on this record that it is more probable than not that the Respondent registered and used all of the Domain Names in an effort to exploit the Complainant’s well-known trademarks. The Panel concludes that the Complainant has established the third element of the Complaint, bad faith.

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 names, <shahid4u.net>, <shahid4u.one>, <shahid4u.onl>, and <shahid4u.ws>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: July 14, 2021