WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amit Patel, Xclusive Boats Charter LLC v. Indopak Tourism LLC and xclusive charters, Fahad Hameed
Case No. D2013-1284
1. The Parties
The Complainant is Amit Patel, Xclusive Boats Charter LLC of Dubai, United Arab Emirates (“UAE”) represented internally.
The Respondent is Indopak Tourism LLC and xclusive charters, Fahad Hameed of Dubai, UAE.
2. The Domain Name and Registrar
The disputed domain name <xclusivecharters.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2013. On July 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2013, 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.
On July 24, 2013, the Center notified the Complainant of Complaint deficiencies, and provided the registrant and contact information disclosed by the Registrar, and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 26, 2013.
On July 24, 2013, the Center received an informal email communication from the Respondent. The Center acknowledged receipt of this communication on July 25, 2013.
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 the Respondent of the Complaint, and the proceedings commenced on July 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2013. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on August 20, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 29, 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
The Complainant appears to be a limited liability company based at the Dubai Marina, Dubai, UAE. The Complainant appears to be the owner of a registered trademark for the mark XCLUSIVE YACHTS SPORT FISHING & YACHT CHARTER. The date of registration of the said trademark is unclear to the Panel, as is the question of whether the said mark is registered in respect of the words only, figurative only, or both words and device.
The Respondent appears to be an entity based in Dubai, UAE. A Mr. Khalid, who has replied to the Center’s emails on behalf of the Respondent, reserved the trade name “XCLUSIVE CHARTERS L.L.C.” with the Department of Economic Development of the Government of Dubai on or about June 27, 2013. The corresponding Initial Trade Name Reservation Certificate produced by the Respondent states, inter alia¸ “Department has the right to request a change of the trade name under certain circumstances (e.g. if the trade name is similar to a registered trade mark).”
The disputed domain name was created on March 5, 2013. The website associated with the disputed domain name offers a variety of “sea experiences” aboard a range of luxury yachts, each of which is stated to be located in the Dubai Marina.
5. Parties’ Contentions
The Panel notes that this case is characterized by extreme paucity of information and lack of coherent submission by both Parties. It appears to the Panel that English is not the first language of either party and that they have each had some difficulty in expressing the nature of their respective cases. The Panel has reproduced both Parties’ submissions below, largely verbatim, however has adjusted word order, spelling and punctuation with a view to making sense of their contentions as best it can.
The Complainant’s entire submissions, with minor amendments by the Panel, are as follows:
Xclusive yachts is a registered trademark under UAE law and this company has set out to profit from our business activity, by registering a similar domain name and including it in Google adwords. The domain name of our brand is <xclusiveyachts.com>; they have registered <xclusivecharters.com>. The client is being confused thinking they are the same company as us as the names reflect the same activity and type of service in the same region.
Their brand is Waterworld Yachts and Indopak Tourism. They understand our position is number 1 in the market. They are trying to cash in on the fact we have a good reputation in the marketplace. They do not own any trademarks for Xclusive Charters as per the registry database in the UAE. They are making an unfair claim upon our brand for commercial gain. We have suffered losses of USD 25,000 in sales to date. They are trying to tarnish our brand image and name.
By viewing the website and products and offerings it is very clear the website was registered in bad faith to maliciously attack our brand.
The Respondent did not file a formal Response. However, in an email dated July 24, 2013 an individual named Mr. Khalid stated the following, with minor amendments by the Panel:
The domain name which you are asking about under the Domain Name Dispute Resolution Policy belongs to my company and matches its registered company name “Xclusive Charters LLC”. Kindly find the attached document of my company name registration. The domain belongs to my company’s trading name. Kindly can you provide the detail on which company trade name you entered complaint against my domain.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
A. Preliminary issue: Court Proceedings
The Complainant has disclosed that it has commenced active court proceedings in connection with the disputed domain name. The Complainant provided this information both by email of July 24, 2013, and as contained in its amended Complaint filed on July 26, 2013. The information provided to the Panel on this subject is however extremely meager. The email of July 24, 2013, stated: “criminal action has been partitioned with the Dubai Economic Department and civil action with the Dubai Courts. Currently a notice has been served to the party, and is subject to reply; the same will be documented in the civil proceedings.” On the same subject, the amended Complaint stated: “Criminal action has been taken against the said company for loss of revenue, a sum of $25,000 USD. This is to cover damages incurred from loss of business for infringement. Civil proceedings are ongoing.”
Disclosure of the existence of such proceedings, whether civil or criminal and howsoever constituted, engages the terms of paragraph 18 of the Rules, which is headed “Effect of Court Proceedings”. Paragraph 18(a) of the Rules provides as follows:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Panel notes that no copies of complaints or other official documents initiating court action between the Parties have been produced by the Complainant. However, for the purposes of this proceeding, the Panel will assume on the strength of the statement made by the Complainant, which has not been disputed by the Respondent, that court action has indeed been duly commenced between the Parties relative to the disputed domain name. While neither party has sought suspension or termination of the present administrative proceeding in light of such action, the Panel has discretion to order either of these in terms of paragraph 18(a) of the Rules. In these circumstances, the Panel has considered whether suspension or termination is appropriate, or whether the Panel should proceed to a decision in this matter.
As noted above, the nature of the court proceedings which are said to have been commenced has not been fully explained to the Panel, nor have any corresponding papers been produced. Nevertheless, in the Panel’s view, the outcome of any such proceedings is likely to be unaffected, nor will either party’s position therein be prejudiced, by the Panel proceeding to a decision in the present case. Given the terms of paragraph 4(k) of the Policy, in the event that the Panel finds for the Complainant, the Respondent may produce suitable official documentation confirming the existence of the court proceedings during the ten business day period between the notification of the decision in the administrative proceeding and its implementation. This would have the effect of staying implementation of the decision. Equally, should the Panel find for the Respondent, the course of any related litigation would be unaffected. No matter which decision the Panel reaches in the present proceedings, the question of who is entitled to the registration of the disputed domain name would ultimately be decided not necessarily by reference to this administrative proceeding but by the court de novo, under applicable national law.
In all of these circumstances, the Panel does not consider it appropriate or necessary to exercise its discretion to suspend or terminate the administrative proceeding.
B. Identical or Confusingly Similar
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate any one element of the Policy will result in failure of the Complaint in its entirety. Accordingly, in light of the Panel’s finding under the heading of bad faith, it is unnecessary for the Panel to address the issue of the Complainant’s trademark in detail. The Panel would however comment that while the Complainant appears to be the owner of a registered trademark, the copy trademark certificate which the Complainant produced with the Complaint is in Arabic which is not the language of the proceedings, nor is it one which the Panel understands. In such circumstances, the Panel is entitled to call for a translation in accordance with paragraph 11(b) of the Rules but finds this unnecessary in the present case in light of its findings below. Equally, the Panel notes that the Complainant produced a document headed “Commercial License” in Annex 5 to the Complaint which may or may not have shed light on this matter however the scan of this document was completely illegible even when examined under greater magnification in the electronic document reader.
C. Rights or Legitimate Interests
In light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
On this topic, the Complainant’s submission consists of a single sentence: “By viewing the website and products and offerings it is very clear the website was registered in bad faith to maliciously attack our brand.” This mere assertion of the Complainant falls very far short of any evidence or indeed coherent argument demonstrating on the balance of probabilities that the Respondent registered and is using the disputed domain name in bad faith. The Panel finds no further support in the record for the Complainant’s case. The Complainant does not, for example, provide supporting evidence of the leading position which it claims to have in the marketplace or of the confusion which it states has been caused to its customers, nor does the Complainant produce any information or materials which would allow the Panel to assess the likelihood of any such confusion.
In these circumstances, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name has been registered and is being used in bad faith and consequently that the third element under the Policy has not been established.
For completeness, the Panel reminds the Parties that this Decision is based upon the record before it in this case and likewise on the Policy and Rules. In no way should this Decision be considered as preventing either of the Parties pursuing or continuing to pursue matters by way of litigation in an appropriate forum. As noted in Section A above, this Decision should not be considered to influence the outcome of any such proceedings in any manner whatsoever.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: September 12, 2013