WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Al Jazeera Media Network v. Syed Hassan
Case No. D2015-2374
1. The Parties
The Complainant is Al Jazeera Media Network of Doha, Qatar, represented by Eithar Abutaha, Qatar.
The Respondent is Syed Hassan of Karachi, Pakistan, self-represented.
2. The Domain Names and Registrar
The disputed domain names <aljazeerainternational.com> and <aljazeerainternational.net> are 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 30, 2015. On December 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 30, 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 received a pre-commencement communication from the Respondent on January 9, 2016.
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 proceedings commenced on January 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2016. The Response was filed with the Center on January 28, 2016.
The Center appointed Dr. Clive N. A. Trotman as the sole panelist in this matter on February 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.
4. Factual Background
The Complainant broadcasts free news and other items internationally by satellite television. Its Arabic and English language channels include Al Jazeera Arabic, Al Jazeera English, Al Jazeera America and Al Jazeera Documentary. The Complainant announced the launch of the “Al Jazeera International Channel” as its new English language channel in 2005 but then changed the name to “Al Jazeera English Channel”.
The Complainant also uses its own domain names <aljazeera.net>, acquired in 2003, and <aljazeera.com>, acquired in 2006, to provide free news services, live TV streaming and advertising.
The Complainant has used its Arabic name, pronounced Al Jazeera in English, as its trade name since 1996. The Complainant holds a number of trademarks of which the following are representative:
- ALJAZEERA, figurative mark with lettering, Community Trademark, Office for Harmonization in the Internal Market, filed August 2, 2005, registered October 20, 2008, filing number 4433728, classes 9, 16, 38, 41;
- ALJAZEERA AMERICA with design, United States Patent and Trademark Office (USPTO), principal register, registered May 19, 2015, registration number 4737903, classes 35, 38, 41;
- ALJAZEERA, USPTO, principal register, registered July 20, 2010, registration number 3820209, classes 9, 16, 35, 38, 41;
- ALJAZEERA with design, Government of Pakistan trademarks registry, registered October 17, 2001, registration number 174327, class 9;
- AL JAZEERA, State of Qatar, Ministry of Economy and Commerce, Commercial Affairs Department, Industrial Property Office, registered October 17, 2006, registration number 37021, class 16.
No background information of significance is available about the Respondent except for the details he has provided as the current registrant of the disputed domain names, which were both registered to the Respondent sometime between March and May 2015.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has produced copies of the registration documents of a number of trademarks including those listed in section 4 above. The Complainant also says it has been using AL JAZEERA as its trade name since 1996.
The Complainant says that its trademark is incorporated in its entirety into each of the disputed domain names, constituting confusing similarity. Furthermore the addition of the word “international” adds to the confusing similarity because of the global recognition of the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not been authorised to use the Complainant’s trademark in the disputed domain names. The disputed domain names are in use as parked pages for advertising and are not used for the supply of the Respondent’s goods or services. Furthermore the disputed domain names are offered for sale on the websites to which they resolve. The Respondent and the previous owners of the disputed domain names have never been known by the disputed domain names or by the Complainant’s trademark.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith for reasons that include the following.
The Complainant says the fact that the first registration of the disputed domain names by their first holder was around the time when the Complainant first announced its English language “Al Jazeera International Channel” shows that the disputed domain names were registered in order to prevent the Complainant from doing so.
The Complainant says the previous owner of the disputed domain names has copied the Complainant’s copyrighted content and registered trademarks to the corresponding websites without authorisation.
A cease and desist letter was sent to Mr. Tedd, the previous registrant of the disputed domain names, on April 19, 2015, requesting the transfer of <aljazeerainternational.com> to the Complainant. Mr. Tedd did not reply but sold the disputed domain names to the Respondent.
The Complainant contends that as Mr. Tedd acquired and used the disputed domain names in bad faith, the Respondent has acted in bad faith in acquiring them from Mr. Tedd.
The Complainant says that the Respondent has acquired the disputed domain names for the purposes of generating revenues from monetised parking pages. The Respondent has no intention of using the disputed domain names to offer any goods or services, except for the sale of the disputed domain names themselves.
The Complainant says that the Respondent has wilfully infringed the Complainant’s trademarks and copyrights.
The Complainant requests the transfer to itself of the disputed domain names.
The Respondent denies the Complaint.
The Respondent contends that the Arabic word “Aljazeera” means “the Island”, referring historically to Saudi Arabia and surrounding countries including the United Arab Emirates (UAE), Qatar, Bahrain, Kuwait and Oman. The word “Aljazeera” is well known and many businesses use it as a part of their trade names.
The Respondent says that the word “international” is also universal and there is no trademark for the whole phrase “Aljazeera international”. He says it is clear from a web search that numerous companies, schools, organisations and entities use the name Aljazeera or Aljazeera International. A number of example screen captures are presented in evidence.
The Respondent states that one of the disputed domain names was first registered in 2006 and has been used since then by a few businesses in trade and tourism. The Complainant’s claim of ownership, brought in 2015, is reckless and unjustified.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to demonstrate that it has rights in the trademark in question. The Respondent has asserted in effect that the word “Aljazeera” is universal or generic, meaning “island”, referring to Saudi Arabia and some adjacent countries. Nevertheless the Complainant has produced documentation showing that it has been granted registration for the trademark ALJAZEERA variously alone or in combination with other word or design elements in jurisdictions including the State of Qatar, Pakistan, the European Union and the United States of America. The Complainant is found to have the required rights in the trademark ALJAZEERA for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain names are <aljazeerainternational.com> and <aljazeerainternational.net>. Each includes prominently the Complainant’s trademark ALJAZEERA in its entirety and is to that extent found to be confusingly similar to the trademark. The additional word “international” is found not to be distinguishing in either instance but to enhance the confusing similarity because, in the context, the word pertains to the international reputation of the Complainant as evidenced by its role as an international broadcaster.
The Respondent has drawn attention to the existence of several other entities, not apparently related to the Complainant, whose names incorporate “Aljazeera” or “Aljazeera International”, and has detailed seven, for example Aljazeera International Catering (UAE) and Aljazeera International School (Saudi Arabia). The Complainant’s burden, however, is limited to proving that each disputed domain name is confusingly similar to the Complainant’s trademark, in which it has succeeded.
The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has not been authorised to use the Complainant’s trademark in the disputed domain names.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction of the Panel.
The Respondent has not specifically claimed to have used or intended to use the disputed domain names for a bona fide offering of goods or services, and there is no evidence of any such use or preparation for use.
The Respondent makes no claim to have been commonly known by the disputed domain names and there is no evidence of his having been so known.
The evidence produced by the Complainant in the form of screen captures taken in December 2015 show the Respondent’s websites at the disputed domain names to be hosting links, that may reasonably be presumed to be commercially remunerative, to a variety of external sources with names such as “Access TV Series Online”, “Ukrainian Ladies Online”, “Watch Live Football”, and also to news sources such as “Al Jazeera in English”. The Panel finds the Respondent’s websites to be commercial in the character of their content and not to qualify as being in noncommercial or fair use.
The Panel cannot conceive of any way in which the Respondent can demonstrate rights or legitimate interests in the disputed domain names and accordingly finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
Notwithstanding when the disputed domain names were previously registered by various entities, the Panel is concerned with their acquisition and use by the current registrant, namely the Respondent. According to the Domain Report by DomainTools LLC on December 29, 2015 submitted by the Complainant, the disputed domain names were registered to Mr. Tedd of Canada on or before February 10, 2013, and were still so registered on April 20, 2015 in the case of <aljazeerainternational.com>, and March 13, 2015 in the case of <aljazeerainternational.net>. By May 9, 2015, both disputed domain names were shown to be registered in the name of the Respondent. This date is about a decade after the announcement of the launch of the “Al Jazeera International Channel”, which the Complainant says was announced in 2005.
The disputed domain name <aljazeerainternational.com> resolves to a holding website, or parking page, headed “The domain aljazeerainternational.com is for sale. To purchase, call Afternic at (telephone numbers). Click here for more details”. The website of <aljazeerainternational.net> is advertised for sale in corresponding terms. The referred Afternic website pages are headed prominently, “aljazeerainternational.com is for sale!” and “aljazeerainternational.net is for sale!”, followed by “Need a price instantly? Contact us now”. Afternic contact details and an online quotation request form are provided.
Trading in domain names, in and of itself, may be a legitimate activity. On the basis of all the evidence, however, the Panel concludes on the balance of probabilities that the disputed domain names have been acquired and used by the Respondent primarily for the purpose of profitable sale to either the Complainant or a competitor of the Complainant. A competitor need not be a direct business competitor of the Complainant (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: “The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”). The Panel finds the registration and use of the disputed domain names by the Respondent to have been in bad faith within the contemplation of paragraph 4(b)(i) of the Policy.
Further, while use of a domain name for sponsored links may be permissible in certain circumstances when the domain name consists of dictionary or common words, the posted links must genuinely relate to the generic meaning of the domain name and not capitalise on the trademark value. Both disputed domain name websites are evidently “monetised” whilst on offer for sale, as is commonly done by domain name traders, by being populated with links, in this case to broadcasting sources such as “Al Jazeera Sport Channel”, “Al Jazeera in English”, “Aljazeera Sport Live TV” and “Aljazeera TV Channel”, or to unrelated businesses such as “Trademark Registration” and “Project Management”, rather than to any generic meaning asserted by the Respondent.
The website of <aljazeerainternational.com> has a page that reads as follows:
aljazeerainternational.com is powered by SmartName to bring you targeted search terms designed specifically to enhance the users overall online search experience. aljazeerainternational.com displays the top advertisers for and more. We've taken the confusion out of searching online, allowing you to find what you want in a timely manner.
We understand everyone searches with different criteria in mind. That’s why we’ve designed aljazeerainternational.com to be navigated on your terms. aljazeerainternational.com brings you the most comprehensive group of advertisers in an easily navigated format, giving users a vast range of choices in as few clicks as possible.”
The website of <aljazeerainternational.net> has a page that reads correspondingly.
Thus the Respondent’s stated intention is to lead visitors efficiently to advertisers. It may reasonably be concluded on the evidence that the Respondent’s operation is intended to be commercially remunerative and that the Respondent may receive a share of advertising revenues in return for referrals of visitors to the links provided. In order to derive this revenue the Respondent must attract visitors to his websites, and the Complainant’s trademark incorporated prominently into the disputed domain names is likely in many instances to provide that mode of attraction. On the evidence, the Panel finds on the balance of probabilities that the Respondent has registered and used the disputed domain names in order to attract Internet visitors by confusion, at least initially, with the Complainant’s trademark for commercial gain in the terms of paragraph 4(b)(iv) of the Policy.
Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(iii) 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 names <aljazeerainternational.com> and <aljazeerainternational.net> be transferred to the Complainant.
Dr. Clive N. A. Trotman
Date: March 2, 2016