WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baruti Investments Ltd v. Ayoub Salimi

Case No. D2015-0680

1. The Parties

Complainant is Baruti Investments Ltd of Belize City, Belize, represented by Avraam Petros, Belize.

Respondent is Ayoub Salimi of Agadir, Morocco.

2. The Domain Name and Registrar

The disputed domain name <dpstream2.net> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2015. On April 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2015.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 21, 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

Complainant operates a website using the domain name <dpstream.net>. Complainant’s website frames, streams and shares links to videos posted elsewhere on the Internet. Complainant's website is presented in the French language and directs its services to French speakers.

Complainant registered the domain name <dpstream.net> on August 28, 2009 and claims to have about 8 million users per month on its website.

Complainant owns a number of trademarks that comprise or incorporate the term “dpstream,” including:

(i) French registered trademark No. 4104108 with an application date of June 26, 2014 in classes 9, 38 and 41;

(ii) Community trade mark no. 013593991 for DPSTREAM as a word mark with an application date of December 19, 2014 in classes 9, 38 and 41.

The Domain Name was registered by Respondent on May 21, 2013.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant states that its “DPStream” website is a “User generated content” platform, where media content is submitted by users. This content is shared by users using Complainant’s “iFrame technique”, where users submit links from third-parties websites or services that are not owned or controlled by Complainant. Complainant claims that its services are legal under European and French law because it runs a hosting service through its website at the domain name <dpstream.net>.

As noted above, Complainant is the owner of a trademark for DPSTREAM and the matching domain name <dpstream.net>. Complainant states that Respondent’s Domain Name is, therefore, confusingly similar to a trademark in which Complainant has rights. The Domain Name only differs by adding the number “2” to the Domain Name.

Complainant contends that Respondent’s Domain Name may confuse Internet users because it is merely one keystroke away from Complainant’s domain name <dpstream.net>. An Internet user seeking Complainant’s website may readily become confused and believe the Domain Name is somehow associated, affiliated with, or sponsored by Complainant. Furthermore, both Complainant’s website and Respondent’s website are in the French language.

(ii) Rights or legitimate interest

Complainant contends that the Domain Name was registered and has been used with the intention of imitating Complainant’s activities and website. In particular, Respondent has adopted the term “dpstream” as part of its name and used it in the Domain Name to take advantage of the associations of that term with Complainant’s business and trademark.

Complainant’s domain name, <dpstream.net>, was registered on August 28, 2009, and Complainant states the website linked to it has about 8 million users per month. However, the Domain Name <dpstream2.net> was registered just less than four years later on the April 21, 2013. At this time, Complainant was already well-known as a streaming service in France and all over the world. As a result, when Respondent registered the Domain Name, it knew that it had no rights in the Domain Name and that it would create confusion with Complainant’s <dpstream.net> Domain Name and website. Thus, there is no evidence to demonstrate any good faith of the use of the Domain Name. Moreover, Respondent is using the Domain Name to benefit commercially through advertising services. Furthermore, the use of the Domain Name is allegedly illegal because Respondent lets website users download infringing media content. Further, Respondent copied for the lay-out of Complainant’s website, and Complainant has submitted evidence to show the similarity between the websites.

(iii) Registered and used in bad faith

Complainant asserts that it is obvious that Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent's website by creating confusion with Complainant’s DPSTREAM trademark. Several facts demonstrate this bad faith. First, as described above, Complainant and its DPSTREAM mark was already well known in April 2013 when Respondent registered the Domain Name. Thus, Complainant argues that Respondent knew for sure that it would be creating confusion by registering the Domain Name. Second, Respondent is benefitting commercially through advertising services offered on its site, while offering some illegal services such as download of infringing media content. Finally, Respondent also copied the lay-out of Complainant’s site, which compounds the likelihood of confusion. As a result, the obvious confusion created by Respondent is creating prejudice to Complainant’s name and trademark, while Complainant states that it is everyday trying to eradicate illegal offers on its website.

Complainant observes that the panel in a similar UDRP case brought by Complainant, Baruti Investments Ltd v. DPStream, WIPO Case No. DCC2015-0001, has ordered the transfer to Complainant of a similar domain name, <dpstream.tv>.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The burden for Complainant under paragraph 4(a) of the Policy is to prove that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant is the owner of a trademark for DPSTREAM and the Domain Name comprises that term with the addition of the number “2”. The Domain Name is registered in the “.net” Top-Level Domain (“TLD”), just like Complainant’s domain name, <dpstream.net>.

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name …”).

Complainant’s DPSTREAM mark is completely incorporated into the Domain Name, while the addition of the number “2” only serves to reinforce the confusingly similarity given that it can be taken to refer to a second website of Complainant.

Accordingly, the Panel finds that Respondent’s Domain Name is confusingly similar to Complainant’s DPSTREAM mark pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Just as the UDRP panel ruled in the case, Baruti Investments Ltd v. DPStream, WIPO Case No. DCC2015-0001, the Panel here is persuaded that the Domain Name was registered by Respondent and has been used with the intention of imitating Complainant and its activities and website. In particular, Respondent has adopted the term “dpstream” as part of its name and the Domain Name to take advantage of the associations of that term with Complainant’s business and mark. Moreover, Respondent has copied many elements of Complainant’s website. As the panel stated in Baruti Investments Ltd v. DPStream:

“Such use does not involve a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. This is so regardless of the question of to what extent the Respondent’s activities are or are not lawful (as to which the Panel makes no finding).”

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the facts and circumstances in this case are very similar to those in the previous case involving Complainant, Baruti Investments Ltd v. DPStream, WIPO Case No. DCC2015-0001. There, the panel reasoned that:

“Although the Complainant brings forward no evidence in support of its claims that DPSTREAM was well known at least in France as the name of the Complainant's service at the time that the Domain Name was registered, the Panel accepts that it is more likely than not that the Domain Name was registered with the Complainant's use of that term in mind. In this respect, there is the Complainant's undisputed assertion that it had been conducting its activities since the registration of its domain name <dpstream.net> on August 28, 2009, which is over a year prior to the registration of the Domain Name. Further, the evidence of more recent use of the Domain Name does reveal a website the look and feel of which is similar to that of the Complainant. Both websites are also in French.”

In this case, Complainant registered and had commenced using its domain name <dpstream.net> almost four years prior to registration of the Domain Name by Respondent in May 2013. This increases the likelihood that Respondent was aware of Complainant and its name and sought to imitate Complainant. Moreover, the Panel finds that this case falls within the exceptional circumstances identified in paragraph 3.1 of the WIPO Overview 2.0:

“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”

In the present case the Panel concludes that at the time of the registration of the Domain Name, the term DPSTREAM was being used in a trademark sense by Complainant and the Domain Name was registered by Respondent with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use.

Regarding Respondent’s use of the Domain Name, it has been used for the bad faith purpose of attracting, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s trademark. The evidence shows clearly that Respondent has sought to imitate Complainant’s website to confuse users.

Accordingly, the Panel finds that, in view of all of the facts and circumstances in this case, Respondent has registered and is using the Domain Name in bad faith.

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 Domain Name, <dpstream2.net>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: June 21, 2015