WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dubizzle Limited BVI v. Muhammad Ammad Siddique

Case No. D2014-2241

1. The Parties

The Complainant is Dubizzle Limited BVI of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Muhammad Ammad Siddique, Dubizzle of Abu Dhabi, Western Region, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <dubizzleinternational.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 December 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2016.

The Center appointed John Katz QC as the sole panelist in this matter on February 3, 2015. 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 registered proprietor of the trade mark DUBIZZLE registered in a number of Middle Eastern countries and a number of applications pending in Middle Eastern countries including the Levant and Magreb. The emphasis is on seeking protection in the greater Middle East/North African region (MENA).

The registrations and applications are for DUBIZZLE as a word mark and DUBIZZLE and device (cartoon character).

The Complainant also operates an associated website “www.dubizzle.com”.

The Complainant was established in 2005 and is the leading online classified and community portal in the MENA region providing an on-line marketplace for trading in goods and services and enabling connectivity between buyers and sellers.

The Complainant has a presence in 11 countries and over 21 cities with 8 million visitors to its website viewing in excess of 290 million pages every month. Of those visitors, 75% are from the United Arab Emirates, and of that 75%, 40% are western expatriates and 20% from the MENA region.

Since 2005 – 2006 and down through September 2014 the Complainant has invested some USD 28 million in marketing activities, advertising and media recognition, which includes use of social media.

The Complainant’s business is recognized as one of the top three fastest rising words used for Google searching in the UAE. The Complainant has expended very considerable amounts of time, energy, and money to advertise, promote and market its associated website. Its Facebook page has over 2.5 million likes and features business and “about us” information relating to the Complainant.

The Complainant features prominently on Compete Traffic and Alexa where it ranks number seven in the UAE.

The Respondent registered the disputed domain name on September 2, 2014. There is an associated website which shows the Respondent is offering the same or similar services to those of the Complainant. The Respondent has on occasions copied on its website trade marks or logos of the Complainant and uses the same social media for promoting its own website and services.

The Respondent appears to feature a disclaimer on its website, disowning any relationship with DUBIZZLE and indicating its business is linked with or to Pakistan only. The disclaimer is not on the front or landing page of the website but is on a subsidiary page. The disclaimer can only be accessed by clicking the link “about us” which takes the viewer to a separate page where the disclaimer can be seen.

When the Complainant sent a cease and desist letter to the Respondent in relation to the domain name and website “www.dubizzle.com.pk” the Respondent contended it could legitimately use the DUBIZZLE trade mark so long as some term was added to it. It offered to sell to the Complainant the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant relies upon its trade mark registrations for DUBIZZLE both as a word mark and with device. It also relies upon its common law goodwill generated through extensive advertising and promotion resulting in general consumer awareness of its business. It contends its DUBIZZLE mark is famous in the MENA region. Whilst that region does not include Pakistan, where the Respondent is located, the geographical proximity of Pakistan to the UAE is obvious.

As a result, the Complainant contends that any person seeing or accessing the Respondent’s domain name and associated website, offering the same or very similar services, will assume, contrary to the fact, that the Complainant and Respondent are in some way associated or alternatively that the Respondent is carrying on its activities pursuant to some form of authorization or licence from the Complainant, again contrary to the fact.

As the Respondent’s website is live and operates apparently in the same or similar area of business the Complainant contends the Respondent will divert traffic legitimately destined to the Complainant. Further, the Complainant contends the Respondent will cause confusion, all of which is injurious to the business of the Complainant and causes damage to its reputation and the overall commercial value of its trade mark DUBIZZLE.

B. Respondent

As the Respondent has defaulted there is no evidence or submission from it. There is nothing put in evidence from or on behalf of the Respondent in a formal way. That being so it is necessary for the Panel to draw inferences from the established facts as put in by the Complainant.

There is however email traffic between the Complainant and the Respondent as a result of the cease and desist letter sent by the Complainant to the Respondent.

In response to the cease and desist letter dated November 20, 2014, the Respondent sent an email dated November 24, 2014. In that email the Respondent claimed there were thousands of combinations of names containing DUBIZZLE and denying the Complainant’s rights to the name, word or mark. The Respondent also claimed that different rules applied in Pakistan where he enjoyed full legal rights to the domain name.

In other emails the Respondent claimed to be allowed to use DUBIZZLE together with some other word to create combinations such as DubizzleHosting, MyDubizzle and the like. He repeated an earlier offer to sell but at a now higher price “because lot of other peoples are also interested to buy this so if you or your client interested then you need to pay the market price of my domain [sic]”. He did not name the market price.

The Respondent did not claim in his emails any direct authorization from the Complainant. Nor did he claim he or a business associated with him was historically known by reference to the DUBIZZLE mark. He seemed to rely on the addition of “international” as a distinguishing feature which was sufficient to avoid any infringement of rights. He also appeared to rely upon the fact that in some unidentified way the law in Pakistan and the registration of the domain name was legitimate and afforded him certain unspecified rights.

6. Discussion and Findings

The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.

As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted. There is however, the email interchange in November 2014.

Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:

(i) The respondent’s domain name is identical or confusingly similar to a trade mark 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 respondent’s domain name has been registered and is being used in bad faith.

Each of three elements must be established by a complainant to warrant relief.

A. Identical or Confusingly Similar

As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.

The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.

Whilst the test for identicality is strict, it is important to look at the trade marks in which the Complainant asserts rights and the actual use by the Respondent and to view the Respondents’ use in context. Certain minor or insignificant alterations can be disregarded as not detracting from identicality.

This point was emphasized by the European Court in a decision in 2003 that considered what constitutes use of an identical mark. In LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34, the European Court held that a mark used by a Respondent is identical with a Complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.

Whilst it is clear that the Respondent has added “international” to the stem DUBIZZLE and thereby has incorporated the Complainant’s primary registered trademark in full, it cannot be said that, in accordance with the European Court decision, the Respondent’s mark is identical. The addition of “international” is not so indistinct or subtle as to go unnoticed.

The second limb of the test is “confusingly similar”. The primary word is DUBIZZLE. The addition of “international” is no more than a geographical description that adds nothing to the primary word or mark beyond a claim that it is worldwide. It relevantly adds little if anything to the primary word or mark and certainly is not a distinguishing feature that would separate it from the Complainant’s primary word mark DUBIZZLE.

The disputed domain name therefore clearly incorporates the Complainant’s trade mark and is confusingly similar.

The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.

B. Rights or Legitimate Interests

As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.

Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.

Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.

Even although the Respondent has not put in any evidence or formal submission by way of response, again it is appropriate and indeed necessary to refer to the correspondence between the Complainant and Respondent at the time of the cease and desist letter in late 2014.

The Respondent mistakenly claims that by adding “international” he has somehow distinguished his domain name and associated website. He also claims to be entitled under Pakistani law to be able to do so as he has “full legal rights of this domain”. He also claims there are thousands of other DUBIZZLE names and the law does not prevent and therefore does not protect the Complainant. He suggests that the Complainant should seek to achieve a law change if it wishes to extend its rights in the manner it claims to do.

Again the Respondent is in error. Pakistan is essentially a common law jurisdiction. It has a trade mark registration system. It applies the worldwide recognized rights that belong to a registered proprietor of a trade mark and which also subsist at common law and give rise to the common law cause of action known in common law jurisdictions as passing off. It can also simply be referred to as protecting goodwill.

The Respondent’s contentions are simply wrong in fact and in law.

There being no subsisting business with which the Respondent was genuinely associated and the Complainant confirming no association or permission, the Respondent can claim no rights or legitimate interests.

The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.

C. Registered and Used in Bad Faith

As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.

The disputed domain name was registered in September 2014. That is some years after the Complainant commenced business. It’s very significant rise in a short space of time and particularly in the MENA region and the clearly established goodwill that has resulted, risks that other “me too” entities will seek to encroach upon that goodwill and trade mark and slip stream by wrongful association.

Given the geographical proximity of Pakistan (where the Respondent resides) to the United Arab Emirates and the entire MENA region, it is inconceivable that the Respondent was not well aware of the Complainant and its associated business when he registered his domain name. The email traffic of late 2014 between the Complainant and Respondent is also particularly relevant here.

Accordingly the Complainant satisfies the test of establishing registration in bad faith.

As for the second limb, use in bad faith, the Complainant must also establish that the Respondent is using the domain name in bad faith.

As the domain name resolves to an active website featuring the same or very similar services to those of the Complainant it necessarily follows that the domain name is being used in bad faith.

It is also relatively easy when looking at the disclaimer on a subsidiary page of the website to draw the inference that the Respondent was and remains well aware of the Complainant and has chosen to use on his website the primary trade mark of the Complainant for the purposes of drawing business.

The Panel accordingly finds that both limbs of paragraph 4(a)(iii) of the Policy are made out.

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 disputed domain name <dubizzleinternational.com> be transferred to the Complainant.

John Katz QC
Sole Panelist
Date: February 17, 2015