WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Al Ghurair Investment LLC v. Serge Riabchuck, Internet and Software Limited
Case No. D2014-0204
1. The Parties
The Complainant is Al Ghurair Investment LLC of Dubai, United Arab Emirates, represented by Al Tamimi & Company, United Arab Emirates.
The Respondent is Serge Riabchuck, Internet and Software Limited of St Heiler, Jersey, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <alghurairinvestment.org> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2014. On February 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 19, 2014. 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 is the umbrella or holding company for the various operations of the Al Ghurair group. According to the Complaint, the first company in the group commenced business in the early 1960s in Dubai. The business has since expanded to operate in a diversified range of fields and some 20 countries on four continents. One part of the business operates flour mills in Dubai, Lebanon, Sudan, Algeria and Sri Lanka and has rice production facilities in Pakistan. According to the Complaint, the business sells over 1 million packs of noodles a day in North Africa and Asia. Other parts of the business are involved in construction, resources, property holdings, retailing, energy, printing and publishing and education.
The Complainant owns a number of registered trademarks in the United Arab Emirates for AL GHURAIR in both English and Arabic with a device of a square within a stylized diamond border.
The registrations cover 21 different International Classes, including International Classes 35 and 36. The applications to register these trademarks were made in 2006 and registration was effected on October 23, 2007.
According to the Complaint, the disputed domain name was registered in 2013.
The disputed domain name resolves to a website. It purports to be the website of Al-Ghurair Investment, a Dubai-based international investment company. The home page includes what purports to be a “Founders’ Message” from the Chairman, Ahmed Al Ghurair. The address given on the contacts page for mail appears to be in Dubai but, assuming it is real, is very different to the Complainant’s address as disclosed in the Complaint or on its official website. The “Founders’ Message” on the Respondent’s website is in somewhat different terms to the “Chairman’s Message” on the Complainant’s official website.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint and the Written Notice have been served, however, on the physical and electronic coordinates, respectively, specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent in accordance with the Rules, paragraphs 2(a) and 4(a).
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the trademark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
While they are not necessarily the largest element in the Complainant’s trademark, the words “Al Ghurair” are a key or prominent part of the Complainant’s registered trademarks. For many people, they are likely to serve the role of identifying the trade source of the goods or services for which the trademark is used. The device element may do that as well but, even so, it is nonetheless likely that a substantial proportion of people would recognize the verbal element of the trademark as identifying the trade origin.
In undertaking the comparison of the proven trademark to the disputed domain name, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) “.org” of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252.
The disputed domain name would be naturally understood by many users of the Internet as comprised of two or three components “alghurair” and “investment” with possibly “alghurair” being understood as “al” plus “ghurair”. The word “investment” is simply a common descriptive term. Insofar as anything in the disputed domain name distinguishes between what type or source of investment may be involved that function is supplied by the component(s) “alghurair”. That term differs from the English component of the Complainant’s registered trademark only by the omission of the space separating “al” and “ghurair”. That difference in itself is trivial, all the more so as it is a common Internet convention to omit, or add, spaces and hyphens.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
(i) before any notice to [the respondent] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant points out that the Respondent appears to be using the disputed domain name to promote the provision of services which are the same as services offered by the Complainant, or members of its corporate group, and falling directly within the scope of its trademark registrations in (at least) International Classes 35 and 36.
The Complainant further states that it has not granted any licence or other authorization of any kind to the Respondent to use the Complainant’s trademark in this manner.
This is particularly significant in the present case since, as noted above, the website to which the disputed domain name resolves presents itself as being the, or a, website of the Complainant or the Al Ghurair corporate group. The website therefore conveys the idea that it is the website of the Complainant or associated with the Complainant’s corporate group. This impression is reinforced by the inclusion on the website of what the Complainant describes as the “fake ‘founder’s [sic] message”.
The Respondent has not filed a response and therefore has not sought to dispute the Complainant’s allegations or otherwise to justify his conduct.
In these circumstances, the use of the Complainant’s trademark without the Complainant’s consent or some other justifying association with the Complainant does not qualify as a bona fide use under the Policy. Examples of this principle in operation include Easyjet Airline Company Ltd v. Andrew Steggles, WIPO Case No. D2000-0024 and Advance Magazine Publishers Inc. v. Lisa Whaley, WIPO Case No. D2001-0248.
Accordingly, the Panel finds that the Complainant has established on the record in this case that the Respondent has no rights or legitimate interests in the disputed domain name under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
The use at the website to which the disputed domain name resolves in the circumstances described above satisfies the requirement of use in bad faith under the Policy.
The Complainant points to that use to draw the inference that the Respondent must have known about the Complainant’s rights before registering the disputed domain name and, further, to have registered the disputed domain name to take advantage of the Complainant’s trademark.
It appears that all the versions of the Respondent’s website cached at <archive.org> since March 31, 2013, the earliest date for which a website was stored, have featured content purporting to be by and about the Al Ghurair corporate group, including the “Founders’ Message” which the Complainant contends is fake.1 It appears therefore that the disputed domain name has been used right from its inception in bad faith under the terms of the Policy.
Taking that into account and bearing in mind that the Complainant has been using and has registered its trademark for many years before the Respondent apparently registered the disputed domain name, the “alghurair” component of the disputed domain name does not appear to be a descriptive term and does not appear to have any association or connection with the Respondent, the Panel infers that the Respondent registered the disputed domain name in bad faith also.
Accordingly, the Complainant has made out the third requirement under the Policy also.
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 <alghurairinvestment.org> be cancelled as requested by the Complainant.
Warwick A. Rothnie
Date: April 2, 2014