WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dubizzle Limited BVI v. Ra’ed Muwafi
Case No. D2015-2170
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 Ra’ed Muwafi of Amman, Jordan.
2. The Domain Name and Registrar
The disputed domain name <sms-dubizzle.com> is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2015. On December 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2015. On December 13 and 30, 2015, and January 22, 2016 the Respondent submitted emails to the Center. The Respondent did not however submit any formal Response. The Center informed the parties of settlement options on January 7, 2016, to which the Complainant did not respond.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 22, 2016. 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.
At the Center’s email communication of December 4, 2015 informing the parties that the disputed domain name was due to expire on December 29, 2015, which was in the course of the present administrative procedure, on January 21, 2015, the Complainant transmitted an email communication confirming it has performed the necessary formalities to renew the disputed domain name in accordance with the Registrar Accreditation Agreement of 2013, paragraph 126.96.36.199. and therefore the UDRP procedure continued.
4. Factual Background
The Complainant, founded in 2005, operates a leading online classifieds and community portal, “www.dubizzle.com”, in the Middle East and North Africa (“MENA”) region, allowing users to buy and sell many different kinds of goods and services; solicit and offer services such as babysitting, event services, and repairs; design ads to post on the website; display ads to post on the website, display ads on profiles across social networking sites, such as Facebook; and search for jobs across numerous locations and industries. The Complainant states it has over 8 million visitors to its website viewing more than 290 million pages every month. The Complainant’s business is related to messaging services, for example new customers to the Complainant’s business are asked to send and SMS to activate their ad/account.
Further, the Complainant asserts that DUBIZZLE acquired the status of a well-known trademark with a substantial and widespread reputation in respect of online classified services in the 11 MENA countries and over 21 cities where it operates.
The Complainant owns several trademark registrations for DUBIZZLE across various jurisdictions, particularly in the MENA region, such as:
- the Jordanian trademark registration number 129995 for DUBIZZLE filed on June 25, 2013, registered on August 13, 2014 covering services in class 35; and
- the United Arab Emirates (the “UAE”) trademark registration number 194179 for DUBIZZLE filed on June 30, 2013, registered on March 8, 2015 covering services in class 35.
Several UDRP panels have found that the Complainant enjoys recognition and goodwill associated with its trademark DUBIZZLE, such as Dubizzle Limited BVI v. Simon Lundgren / Domain Park Ltd, WIPO Case No. DAE2015-0002 where the panel found that the trademark DUBIZZLE “acquired reputation” in the MENA region; Dubizzle Limited BVI v. Muhammad Ammad Siddique, WIPO Case No. D2014-2241 where the panel found a “clearly established goodwill” in the trademark.
The disputed domain name <sms-dubizzle.com> was registered on December 29, 2014 by the Respondent. According to the WhoIs information, the Respondent resides in Jordan and, according to the information provided on the portal associated with the disputed domain name filed as Annex 11 to Complaint, the Respondent carries out its business in the UAE.
At the time of filing of the Complaint, the website associated with the disputed domain name (i) resolved to a commercial website that was promoting and selling a SMS messaging services presenting the Respondent as “a leading player in the MENA region for SMS messaging solutions”; (ii) was featuring a similar red and white color scheme associated with the Complainant’s combination of colors on its own official website at “www.dubizzle.com”; and (iii) featured no disclaimer explaining the non-existent relationship with the Complainant.
On October 1, 2015, the Complainant sent a cease and desist letter by email followed by two reminders to the Respondent and received no reply.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark DUBIZZLE, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not formally replied to the Complainant’s contentions, however the Respondent submitted three short email communications with a content difficult to understand, as follows:
- Respondent’s email communication of December 13, 2015:
i’m just reseller domains
and i ask my client and he not interested to renew this domain”
- Respondent’s email communication of January 21, 2016:
the onlydomain site renew this domain form self
now i contact him to know how this domain renew ?
and from side i remove the hosting and i told you my agent not interested any more in it”
- Respondent’s email of communication January 22, 2016:
i take with onlydomain company to push this domain to udrp to end this problem
but the domain blocked
so you can send email to onlydomain for unlock domain and push it to anther account and give him to udrp”
From the above, this Panel infers that the Respondent received the communications in the present procedure and does not put forward any evidence of good faith or bona fide registration and use of the disputed domain name, to the contrary, it apparently claims it registered the disputed domain name for a third party which apparently is not interested in keeping it anymore.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, the 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 communications to the Center in December 2015 and January 2016.
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 disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Each of three elements must be established by the Complainant to warrant relief.
A. Identical or Confusingly Similar
The Complainant holds trademark registrations for DUBIZZLE. The disputed domain name <sms-dubizzle.com> incorporates the Complainant’s trademark preceded by a hyphen and the term “sms” which is the widely used acronym for the generic, descriptive terms “Short Message Service”, a text messaging service component of phone, web, or mobile communication system.
Adding such indicator is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the Complainant’s trademark. See paragraphs 1.5 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Further, it is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphen in this case, dots) in a domain name and indicators for generic Top-Level Domains (e.g., “.com” in this case, “.biz”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <sms-dubizzle.com> is confusingly similar to the Complainant’s trademark DUBIZZLE, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that it had no business relationship with the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or a bona fide offering of goods or services. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent. See paragraph 2.1 of the WIPO Overview 2.0.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Further, according to the records in the file, at the time of fling the Complaint the disputed domain name was used for promoting SMS services, such services being also related to the Complainant’s trademark and corresponding business. Further, the website associated with the disputed domain name has a color scheme which resembles with the colors on the Complainant’s official website and has no disclaimer whatsoever informing the Internet users with regard to the non-existent relationships between the parties. These facts are definitely not a legitimate noncommercial or a bona fide offering of goods or services in relation to the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark registrations for DUBIZZLE in many jurisdictions including in Jordan, where the Respondent is apparently located and in UAE where the Respondent caries out its business.
Further, the Complainant’s trademark DUBIZZLE is distinctive and has a reputation in the MENA region, according to the documents submitted and previous UDRP panels. The Respondent resides and carries out its activity apparently in the same region.
The disputed domain name was created in December 2014 and incorporates the DUBIZZLE trademark and the term “sms” which is generic and connected to the Complainant’s business in relation to DUBIZZLE.
For the above, the Panel concludes without a doubt that the Respondent was aware of the Complainant’s trademark and business at the time it registered the disputed domain name and was targeting it in order to create confusion for the Internet users and to capitalize on the Complainant’s goodwill associated with DUBIZZLE trademark.
Further, at the time of filing of the Complaint, the disputed domain name resolved to a website that promoted SMS services in the MENA region, depicted the colors used by the Complainant on its official website and contained no disclaimer disclosing the non-existing relationship between the parties. The Complainant is a leading online classifieds and community portal in the MENA region with an impressive number of visitors. Thus, it is obvious that the Respondent was diverting Internet users searching for the Complainant’s goods and services to its own website by incorporating the distinctive DUBIZZLE trademark in the disputed domain name, copying the colors of the original website associated with the Complainant’s trademark. The Respondent was thus using the fame of the Complainant’s trademark to improperly increase traffic to the website corresponding to the disputed domain name for its own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
By using the Complainant’s trademark without authorization, the Respondent exploits its goodwill and fame, which may result in dilution and other damages as well.
Further, the Respondent did not formally respond to the Complaint. In fact, the Respondent send three email communications saying on short that it is not interested in the disputed domain name. However, the Complainant’s cease and desist letter and two reminders sent before commencing the present procedure remained unanswered. Given the other circumstances of the case, such behavior of the Respondent may be considered as further evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name <sms-dubizzle.com> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <sms-dubizzle.com> be transferred to the Complainant.
Date: January 29, 2016