WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emirates v. Zain Ul Abidin/Peshawar Jobs
Case No. D2013-1353
1. The Parties
The Complainant is Emirates of Dubai, United Arab Emirates, represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Zain Ul Abidin of Peshawar, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <arabianadventuresdubai.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2013 against two Respondents, Zain Ul Abidin/Peshawar Jobs and M. N. /Royal Eagle Tourism, LLC. On July 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Zain Ul Abidin/Peshawar Jobs is listed as the registrant and providing the contact details.
The Center verified that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 27, 2013. Two informal email communications were received from M. N. by the Center on August 19, 2013 and August 28, 2013.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 13, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a Dubai corporation, which was founded in 1985 and is well known primarily for its passenger air services. Besides such services, the Complainant also provides other services, inter alia ground logistics and tourism under “Arabian Adventures”. Arabian Adventures is an integral part of the Complainant’s Destination and Leisure Management division, which has been trading since 1985 and has more than 300 employees. For the financial year ending March 31, 2013, the Complainant announced a record of revenue and operating income of AED 226 million.
The Complainant has numerous trademark registrations for the trademark ARABIAN ADVENTURES THE DUBAI DESTINATION MANAGEMENT COMPANY & design worldwide, inter alia United Arab Emirates trademark registration no. 5201, registered on December 10, 1995 in class 39, and UK trademark registration no. 2027886, registered on July 19, 1996 in Classes 39, 41 and 42 (the “Complainant’s Marks”). Furthermore, the Complainant applied for registration of the trademark ARABIAN ADVENTURES in many jurisdictions worldwide on May 30, 2013. The Complainant promotes its service online at “www.arabian-adventures.com”, which has been operational since at least October 18, 2000 and which was being viewed more than 100,000 times in June 2013.
The disputed domain was registered on December 1, 2010 and is used in connection with a website offering desert safari and Dubai tours operated by Royal Eagle Tourism, LLC/ M. N. since 2011.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The Complainant relies on registered trademark rights as well as unregistered trademark rights in ARABIAN AVENTURES. In this context, the Complainant provides evidence that it was awarded the “Certified Emissions Measurement And Reduction Scheme” certification in 2011 and the “Communicator Awards” 2013. It furthermore contends that its brands Emirates and Arabian Adventures are well known throughout the world. It provides brochures, excerpts from consumer reviews of October 16, 2003, November 28, 2009 and January 14, 2007 referring to the Complainant’s tourism services as “Arabian Adventures”, as well as a few press releases and press articles referring to the Complainant and its services under the Emirates and the Arabian Adventures brands.
The Complainant states that the disputed domain name is identical and/or confusingly similar to the trademarks in which the Complainant has rights, as it differs from “Arabian Adventures” (i.e. the dominant part in the Complainant’s Marks), the Complainant’s domain name <arabian-adventures.com> and the Complainant’s international registrations for ARABIAN ADVENTURES only in the use of the word “Dubai” and the hyphen between the words “Arabian” and “Adventures”.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as he is not affiliated with the Complainant and has never been licensed or otherwise permitted by the Complainant to use its trademark or any part of it, as the Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the disputed domain name, as the Respondent cannot demonstrate a bona fide offering of goods or services, and as the Respondent is not making a legitimate noncommercial or fair use.
(3) The Complainant states that the disputed domain name was registered and is being used in bad faith. It argues that where a domain name confuses people or businesses into believing that it has been registered to, operated by, or otherwise connected with the Complainant, that registration is a bad faith registration. It further states that the disputed domain name was registered 10 years after the Complainant’s website had become operational. With regard to bad faith use, the Complainant argues that it is reasonable to expect that many, perhaps the majority of Internet users who search for the name ARABIAN ADVENTURES DUBAI expect to find an authentic website associated with the Complainant and therefore may initially be confused into believing that the disputed domain name is associated with or sponsored by the Complainant. Thus, the Respondent would have attracted visitors through the reputation of the Complainant’s Marks. The Complainant further argues that the disputed domain name was undoubtedly chosen in an effort to take advantage of the goodwill associated with the Complainant’s marks and that Royal Eagle Tourism, LLC has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s marks.
In his first informal email communication, Mr. M. N. states that the website at the disputed domain name is managed by him in the United Arab Emirates while he is telling his clients that he is not the Complainant and making it clear that the website is operated by Royal Eagle Tourism, LLC. In his email of August 28, 2013 he further states that the disputed domain name is made up of three generic words, that he also owns and operates <arabian-safari.com>, that the disputed domain name has nothing to do with the Complainant’s trademarks and that he has never used the Complainant’s brand. He apologizes for the late filing and states that he was confused about the due date of the reply and that his English is not too good.
6. Discussion and Findings
The first point to be dealt with is the identity of the Respondent. The Complainant was filed against two Respondents, the registered domain name owner and the operator of the website available at the disputed domain name. The Panel will treat the registered domain name owner as sole Respondent for the purpose of these proceeding and will base the findings on the actual use of the disputed domain name by Royal Eagle Tourism, LLC.
The second point to be dealt with is the late filing of the M. N.’s second email, which was not filed within the time limit for the Response set by the Center, but one day later. According to paragraph 14 of the Rules, the Panel need not have regard to the response in this case (but can take it into account if there are good reasons for it to apply its discretion) and draw all inferences it considers appropriate. Responses submitted late were considered by previous panels in particular where they were filed before commencement of the decision-making process (cf. e.g. J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035) or where the lateness did not delay the decision (cf. e.g. Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591). Although this Panel is also aware of decisions by previous panels rejecting out of time responses, it considers it more important that each party is given a fair opportunity to present its case than to penalize the Respondent for a slight delay. The Response is therefore accepted.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(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. Identical or Confusingly Similar
The Complainant does not own any registered trademark rights in ARABIAN ADVENTURES only but has applied for the registration of numerous trademarks comprised of such terms. It has consistently been held by panels in other UDRP proceedings that a trademark application is not sufficient to establish rights in a mark without evidence of unregistered (i.e. common law) trademark rights (cf. Mk-Net-Work v. IVE Technologies, WIPO Case No. D2004-0302; PRGRS, Inc. v. Pamela Pak, WIPO Case No. D2002-0077; Mayekawa Mfg. Co., Ltd. v. Modern Limited - Cayman Web Development, WIPO Case No. D2005-0745).
The Complainant claims unregistered trademark rights in ARABIAN ADVENTURES based on the use of such terms in the course of rendering services to tourists since its establishment. It is well-established that unregistered trademark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7; UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). However, to establish unregistered trademark rights under the Policy, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
In the Panel’s view, the evidence provided by the Complainant is not sufficient to establish that the Complainant enjoys unregistered trademark rights under the UDRP in the terms “Arabic Adventures”. In support of its claim of unregistered trademark rights the Complainant filed only a few consumer reviews and some marketing material, press releases and press articles referring to “Arabic Adventures”. The Complainant has neither provided any information on actual or former sales under the mark ARABIC ADVENTURES nor any information on money spent on advertising in relation to this mark.
Finally, given that the Complainant does not enjoy trademark rights under the UDRP in the term “Arabic Adventures” only, it is questionable whether it can rely on rights in this term based on its registered trademark rights in ARABIAN ADVENTURES THE DUBAI DESTINATION MANAGEMENT COMPANY & design. It is well established that the similarity between a trademark and a disputed domain name is not eliminated by the fact that the trademark includes additional graphical elements, which cannot be reflected in a domain name (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932). However, the Panel is not convinced that the overall impression of the second level of the disputed domain name is in fact confusingly similar to the verbal elements of the Complainant’s Marks, which include a total number of seven generic words. The words “Arabian Adventures”, in which the Complainant claims to have rights and which are included in the Complainant’s Marks, represent only a small part of all verbal elements included in such trademarks and are not in the Panel’s view sufficiently dominant or distinctive in relation to the tourism services offered by the Complainant, neither as single words nor as a combination. Therefore, the Panel tends to the assumption that the Complainant has not established that the disputed domain name is confusingly similar to the ARABIAN ADVENTURES Marks. However, in the light of the Panel’s finding below (cf. 6.C.) it is not necessary for the Panel to come to a decision in this regard.
B. Rights or Legitimate Interests
In the light of the Panel’s finding below (cf. 6.C.) it is not necessary for the Panel to come to a decision in this regard either.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the Respondent has registered or acquired the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
With regard to the bad faith registration element, having carefully considered the facts contained in the case file, the Panel finds that the Complainant has not provided sufficient evidence with regard to the Respondent’s actual knowledge of the Complainant’s trademark rights at the moment of time the Respondent registered the disputed domain name and that, therefore, the Complainant failed to meet its burden of proof in this regard.
The Panel considers that the term “Arabian Adventures” is not a distinctive identifier for a specific company or user, but rather a generic and descriptive that is concerned with the provision of services related to adventure tourism in the Arabian peninsula. Such a finding is supported by the fact that there is substantial third party generic use of these words in the tourism sector. In this regard, the Panel notes that the domain name <arabianadventures.com>, which is identical to the Complainant’s domain name except for the omission of the hyphen, appears to be used by a third party.
Based on the facts and the evidence provided by the Complainant, the Respondent must not necessarily have been aware of the Complainant when registering the disputed domain name. In this regard, the Panel especially takes into account that the Complainant did not provide any significant information on its activities at the time of the registration of the disputed domain name or before such date. Moreover, the Respondent is located in Pakistan and the Complainant did not provide any information on its activities in Pakistan before or at the time of the registration of the disputed domain name in 2010, except for a single newspaper article from 2008. Such evidence is not sufficient for a finding that the Respondent was probably aware of the Complainant’s Marks at the time of the registration of the disputed domain name.
Consequently, the Panel concludes that the third element of the Policy has not been met on the present record in these Policy proceedings and that the Complaint must be denied.
For the foregoing reasons, the Complaint is denied.
Date: September 28, 2013