WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gulf DTH LDC v. WhoIs Privacy_Protection / Hulmiho Ukolen
Case No. D2015-2053
1. The Parties
The Complainant is Gulf DTH LDC, c/o Maples Corporate Services Limited of George Town, Grand Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and the Northern Ireland, represented by Clyde & Co., United Arab Emirates.
The Respondent is WhoIs Privacy Protection of Praha, Czech Republic / Hulmiho Ukolen of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <osnyahala.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2015. On November 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2015, 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. The Center sent an email communication to the Complainant on November 24, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 25, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 21, 2015.
The Center appointed Petter Rindforth as the sole panelist in this matter on December 28, 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.
The Panel shall issue its Decision based on the Complaint, including Amendments of the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent.
The language of the proceeding is English, as requested by the Complainant and not rejected by the Respondent.
4. Factual Background
The Complainant operates a pay-television network in the Middle East and North Africa region, including a group of channels called "OSN Yahala", and is the owner of an extensive number of trademark registrations for OSN and YAHALA, including:
- United Arab Emirates trademark registration No 162842 for YA HALA! in Arabic, registered on June 18, 2012 for services in class 38;
- United Arab Emirates trademark registration No 162841 for OSN YA HALA! in English and Arabic, registered on June 18, 2012 for services in class 41;
- United Arab Emirates trademark registration No 218235 for OSN, registered on December 31, 2014 for services in class 35;
- United Arab Emirates trademark registration No 105271 for OSN, registered on December 30, 2010 for services in class 38;
- United Arab Emirates trademark registration No 105272 for OSN, registered on June 30, 2010 for services in class 41;
- United Arab Emirates trademark registration No 130812 for OSN (fig), registered on February 1, 2011 for services in class 38;
- United Arab Emirates trademark registration No 130811 for OSN (fig), registered on February 1, 2011 for services in class 41;
- European Community Trademark registration No 011953461 for YA HALA! in Arabic, registered on January 28, 2014 for services in classes 35, 38 and 41.
The Complainant also has a pending European Community Trademark application No 013236856 for OSN YA HALA! in English and Arabic, filed on September 9, 2014 for services in classes 38 and 41.
The disputed domain name <osnyahala.com> was registered on June 10, 2015. No information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant.
5. Parties' Contentions
The Complainant operates a pay-television network in the Middles East and North Africa region that offers international television entertainment content such as movies, sporting events and various television series. A specific group of channels is called "OSN Yahala", an Arabic language channel exclusively broadcasting Arabic language programs in the region. "OSN Yahala" is the Complainant's most profitable and popular group of channels. The word "yahala" is the Arabic translation for "welcome" and is registered as a trademark for the Complainant in Arabic script in several countries.
The Complainant has used the registered OSN trademark since 2009, and the combination OSN YAHALA, and YAHALA in Arabic have been used since 2011. The Complainant owns over 200 trademarks containing or consisting of the word "osn" and/or "yahala" (Arabic).
The Complainant states that the disputed domain name <osnyahala.com> is identical to the Complainant's trademark OSN and YAHALA (Arabic). The "osn" part is identical to the Complainant's trademark OSN and the "yahala" part of the disputed domain name is phonetically identical to the YAHALA (Arabic) trademark, as YAHALA is a transliteration of the English pronunciation of YAHALA (Arabic).
The Complainant contends that the disputed domain name has the effect of creating confusion in the minds of Internet users that will inevitably lead them to believe that the disputed domain name is associated with the Complainant – which uses "www.osn.com" as its main website – and/or that the Respondent is a licensee or authorized representative of the Complainant.
Further, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant's trademarks or to offer for sale any domain names containing the trademark OSN YAHALA. The Respondent is not known by the name "Osn Yahala", nor has the Respondent acquired any trademark rights containing the expression "osn yahala".
The Respondent has only registered the disputed domain name in an attempt to exploit the financial position of the Complainant by offering the disputed domain name for sale.
Finally, the Complainant concludes that the disputed domain name was registered and is being used in bad faith.
The Respondent is, since October 29, 2015 via an external website, offering the disputed domain name for sale at a cost of USD 4,750, a sum that is far in excess of the Respondent's out-of-pocket costs directly related to the registration and maintenance of the disputed domain name. The Respondent considers that this is clear evidence that the disputed domain name was registered and is being used in bad faith.
Further, the Respondent has intentionally attempted to attract for financial gain, Internet users to the Respondent's website and linked re-direction websites, by creating a likelihood of confusion with the Complainant's registered trademarks.
A user entering the website under the disputed domain name is re-directed to a website featuring a heading of "OSNYAHALA.COM" providing the user with a number of hyperlinks, including "Movies", "HD Packages", "Free HD Channels", "Cable TV Over the Internet", etc., directing the user to other television program providers, including competitors to the Complainant.
The Complainant further submits that the Respondent would have been aware of the extensive reputation and use of the trademark OSN at the time of registering the disputed domain name. The combination of the words "osn" and "yahala" is unique to the Complainant and there is no conceivable way that the Respondent would have created the combination independently without prior knowledge of the Complainant's OSN YAHALA trademark and television channels.
The Respondent has a pattern of misappropriating third party trademarks for domain name registrations (the Complainant refers to 17 other UDRP cases filed against the Respondent).
Finally, the Complainant refers to the Respondent's address as provided by the Registrar, with contains presumably misleading details such as a PO Box or zip code listed as "12345" and a telephone number as "+1.23456789", being further evidence of the Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for OSN and YA HALA! (in Arabic), both separate and in combination e.g., United Arab Emirates trademark registration No. 162841 for OSN YA HALA! in English and Arabic, registered on June 18, 2012 for services in class 41, and European Community Trademark registration No 011953461 for YA HALA! in Arabic, registered on January 28, 2014 for services in classes 35, 38 and 41.
The relevant part of the disputed domain name is "osnyahala". The addition of the generic Top-Level Domain ".com" is insufficient to distinguish the disputed domain name from the Complainant's trademarks.
The Panel agrees with the Complainant, that the "osn" part of the disputed domain name is identical to the Complainant's trademark OSN. As to the "yahala" part, it is noticed that for at least Arabic speakers (the main customers of the Complainant) "Ya Hala!" in Arabic will be phonetically transliterated into English as "yahala". See Alam El Phan Co. v. Khalid George, WIPO Case No. D2009-1346 (While there is of course no visual similarity between the Arabic mark and the English transliteration, the Panel finds the similarity in pronunciation undeniable; Arabic speakers would find the English transliteration of the domain name to refer to the Arabic mark).
The Panel concludes that the disputed domain name <osnyahala.com> is confusingly similar to the Complainants trademarks OSN, OSN YA HALA! in English and Arabic, as well as YA HALA! in Arabic.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant's prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainant's trademarks and is not an authorized agent or licensee of the Complainant's products, services or trademarks. There is nothing in the Respondent's name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent's use of the disputed domain name for a website with sponsored links to competitors of the Complainant is an obvious attempt to mislead customers seeking for the Complainant's services and website and to earn click-through revenue. Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is "well established" that the use of a domain name to "trade[…] off Complainant's trademark […] is not bona fide" and "cannot confer any rights or legitimate interests" upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd., WIPO Case No. D2010-1680(registration of a domain name "for the purpose of misleading or diverting consumers" cannotgive to rise rights or legitimate interests).
Apart from such use, the disputed domain name is also offered for sale to the Complainant and/or to other interested parties, for an amount that is likely in excess of the Respondent's out-of-pocket expenses directly related to the disputed domain name. Such use does not establish rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As concluded above, the Complainant's trademark OSN and YA HALA! (in Arabic), in different versions are well protected and well known in at least Middle East and North Africa region of the world, but also registered in the European Union, including Finland – the home country of the Respondent. Here, the Panel notes that the Complainant has a pending European Community Trademark application No. 013236856 for OSN YA HALA! in English and Arabic, filed before the registration of the disputed domain name.
Thus, it is clear to this Panel that the Respondent had the Complainant's trademarks in mind when the Respondent registered the disputed domain name.
Registration of a trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry - Succession Saint Exupéry - D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
The disputed domain name is used for a website with sponsored links to competitors of the Complainant. In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant's website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364("the incorporation of Complainant's trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant's <swarovski.com> and <swarovski.net> domain names").
The Panel also notes that the Respondent initially used a privacy / proxy service to avoid disclosing the Respondent's real identity. Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. In this case, the Respondent has been involved in a number of similar domain name disputes. Therefore, the Panel concludes that the Respondent has used the proxy registration service to increase the difficulties for the Complainant in identifying the Respondent. In addition, even the Respondent's "real" and registered address and contact information seems to be false. This is further indication of the Respondent's registration and use in bad faith.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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 <osnyahala.com> be transferred to the Complainant.
Date: January 11, 2016