WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MBC FZ - LLC v. Ebator, Tarek Hassan Abdelaal
Case No. D2012-2305
1. The Parties
Complainant is MBC FZ – LLC of Dubai, United Arab Emirates (“UAE”), represented by AI Tamimi & Co, UAE.
Respondent is Ebator, Tarek Hassan Abdelaal of Dubai, UAE.
2. The Domain Name And Registrar
The disputed domain name <mbcegypt.net> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2012, 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 Complainant on November 30, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 4, 2012.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on December 27, 2012. The Center received informal email communications from Respondent on January 1, 3, 9 and 12, 2013.
The Center appointed Nayiri Boghossian as sole panelist in this matter on January 9, 2013. 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
Complainant’s corporate group operates widely-known television and radio broadcast and webcasting in the Middle East under variants of the term “MBC,” for which Complainant owns many trademark registrations in Europe and countries throughout the Middle East region. For example, Complainant owns the following registrations in Egypt: MBC (logo), Registration No. 205394; MBC (logo), Registration No. 205396 MBC (logo) Registration No. 205397, all registered August 13, 2007.
Complainant also has dozens of websites supporting its TV and radio operations using the MBC marks.
The disputed domain name was registered July 11, 2012 and presently routes to a webpage stating “This domain is available for sale!” and indicating that offers will be accepted until January 20, 2013.1
5. Parties’ Contentions
Complainant explains that “MBC” stands for “Middle East Broadcasting Center”. Complainant avers that the MBC media group is the Arab world’s largest television broadcaster, having pioneered free-to-air satellite broadcasting in the region since 1991. Complainant describes how its business has grown to include 11 broadcast television channels, two FM music stations, and the region’s first video-on-demand and television “catch up” websites. Complainant states that its “www.mbc.net” website has roughly 17 million hits a month, with Egypt contributing the second largest category of viewers.
Complainant alleges that it owns extensive trademark rights in or containing the name “MBC,” both by registration and extensive promotion throughout the region: in 2012 Complainant estimates spending nearly USD 4.5 billion on advertising and promotion of its services via broadcast radio, TV, Internet and print media, in addition to reaching 90 million regular viewers through its group’s TV channels.
Complainant avers that it launched its newest Arab TV channel, MBC Egypt, in November 2012, following considerable advance news of the event across the Middle East region.2 Complainant states that in November 2012 it also became aware of Respondent’s website, which was being used to “reproduce content identical to content proprietary to the Complainant.”
Under the Policy, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in respect of the disputed domain name, and (3) Respondent registered and uses the disputed domain name in bad faith, having intended through confusion to attract consumers to Respondent’s website for Respondent’s own pecuniary gain.
On the foregoing basis Complainant seeks transfer of the disputed domain name.
The disputed domain name was first registered July 11, 2012.
Respondent did not submit a Response to the Complaint. However, as noted, Respondent made the following informal email communications addressed to the Center after the deadline for Response had passed:
January 1, 2013 (from an email address not associated with the registrant details of the disputed domain name): “Hello, Please send me a copy of the complaint related to WIPO Case No. D2012-2305 Kind Regards,”
January 3, 2013 (this and following emails from the email address listed in the registrant details for the disputed domain name): “Hello, I do not know what is all these about, could anyone explain for me what is giong [sic] on?”
January 9, 2013: “i did not understand all that , could you please explain for me that and on Arabic ? Kind Regards”
January 12, 2013: “I want to say that i purchased The domain ‘mbcegypt.net’ before the MBC open their own Channel MBC Masr, and their Channel Name is ‘MBC Misr’ not ‘MBC Egypt’ and if i used the domain or not, it’s up to me, since i bought it with my money so it is not their right to request the Domain through you, they can contact me if they want to have it or if they want to purchase it, Thank you . Kind Regards,”
6. Discussion And Findings
The Panel is required to render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a formal Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s trademarks, the Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s trademarks.
The precise appearance of the logos in many of Complainant’s trademark registrations is not before the Panel in this proceeding, as Complainant did not submit any exhibits thereof. However, Complainant’s widespread operations in the Middle East, the fact that MBC’s media operations have regularly been shown to tens of millions of viewers and the considerable spending on promotion of MBC’s services are sufficient to permit the Panel to conclude for purposes of this proceeding that Complainant has rights in the MBC trademark.
Panels usually disregard the generic top-level domain (gTLD) in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the gTLD “.net”, the remaining term “mbcegypt” is made up of the simple combination of Complainant’s MBC trademark and the shortened English form for the official English formal country name “Arab Republic of Egypt.”
Many previous UDRP panels have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).
Consistent with previous UDRP decisions, the Panel agrees that the addition of the country name Egypt to Complainant’s trademark does not alter the confusion with Complainant’s marks that Internet users would experience.
The disputed domain name is confusingly similar to Complainant’s trademark, therefore the Panel concludes that the requirements of the Policy, paragraph 4(a)(i), are established.
B. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a record showing a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established by Complainant and Respondent does not rebut that prima facie case.
First, the Panel accepts as true Complainant’s uncontroverted allegations that Respondent has no authorization or license to use Complainant’s trademark.
Second, the Panel agrees with Complainant that there is no indication that Respondent is commonly known by the disputed domain name.
Third, the Panel finds that Respondent is not making a bona fide, legitimate noncommercial or fair use of the disputed domain name because Respondent is using the disputed domain name to mirror Complainant’s proprietary content.3
While the Complaint states that Respondent’s motivation is “pecuniary,” it fails to elaborate by providing explanation or evidence in support of the claim that Respondent’s use is for commercial gain. However, even if Respondent’s website were truly noncommercial, the Panel does not consider the mere copying of Complainant’s content without commentary to be the kind of use contemplated under the Policy as fair use or for another legitimate noncommercial purpose. The Panel also notes that there is no disclaimer or nothing on Respondent’s website to alert Internet users to the fact that the website making use of a domain name confusingly similar to Complainant’s trademark actually is not associated with Complainant.
Given the substantial replication on a website making use of Complainant’s trademarks, the Panel is comfortable in concluding that Respondent’s use does not qualify as being “without intent…. to misleadingly divert consumers.” Policy, paragraph 4(c)(iii).4
In sum, the Panel concludes that a prima facie case is established. Respondent has not rebutted that case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Paragraph 4(b) of the Policy lists circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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;
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other 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 respondent’s website or location.
However, these circumstances are not exhaustive. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complaint appears to rely on the fourth ground cited above. However, the Complaint fails to establish the fourth ground to the satisfaction of the Panel because, as previously noted, the Complaint does not express the factual basis that supports its allegations of use “in bad faith for the purpose of misleadingly directing users to the Respondent's site for pecuniary gain to the Respondent.” (emphasis supplied)
The Panel agrees, however, that Complainant’s trademarks were well established in the region and in Egypt by the time of Respondent’s registration of the disputed domain name in July 2012. Thus, the Panel finds that Respondent registered the disputed domain name with Complainant’s trademarks in mind, intending to attract Internet users through using the trademarks. Such conduct constitutes bad faith registration under the Policy. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
As for bad faith use, Complainant has submitted evidence that Respondent’s website displayed content identical to Complainant’s proprietary content. Respondent has not contested Complainant’s allegations or proof on this point.
The Panel observes that Respondent’s display of such material, making use of Complainant’s trademark, is in fact a form of competition with Complainant. Such competition with the trademark holder often supports a finding of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
In these circumstances, the Panel concludes that Respondent’s operation of the website to replicate Complainant’s content without authorization is clear proof of use in bad faith under Policy paragraph 4(b)(iii) (registration of disputed domain name primarily for the purpose of disrupting the business of Complainant).5
The Panel concludes therefore that Respondent has registered and is using the disputed domain name in bad faith.
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 <mbcegypt.net> be transferred to Complainant.
Date: January 22, 2013
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5. Complainant has also submitted evidence of the earlier appearance of the website, discussed below.
2 The Complaint annexes evidence of advance news of the launch beginning in October 2012.
3 It is not bona fide because the replication is not authorized.
4 The Panel makes the ruling of the absence of legitimate noncommercial or fair use based only on the evidence in the limited record before it, which shows the replication of content without commentary. The Panel refrains from expressing a view as to outcome of any other proceeding in which commentary or criticism might be added to the complainant’s materials. For a range of considerations that UDRP panels apply where the facts suggest the possibility that a respondent’s content supports rights and legitimate interests, see generally WIPO Overview 2.0, paragraph 2.4.
5 Respondent’s fragmented and incomplete responses to this proceeding suggest a lack of understanding by Respondent about the terms and conditions of the agreement into which Respondent entered to register the disputed domain name under the UDRP. Under the circumstances, the Panel views Respondent’s written reply to the Complaint, showing disregard of the promises Respondent undertook in entering into the registration agreement with the Registrar, to be further evidence of bad faith. Telstra, supra.