WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fadaat Media Limited, Alaraby Aljadeed Limited and Rainbow Media SAL v. Registration Private, Domains By Proxy, LLC / Linda Mattar

Case No. D2016-1589

1. The Parties

The Complainants are Fadaat Media Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Alaraby Aljadeed Limited of London, United Kingdom, and Rainbow Media SAL of Beirut, Lebanon, represented by Kemp Little LLP, United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Linda Mattar of London, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <alarabialjaded.com>, <alarabialjaded.info>, <alarabialjaded.net>, <alarabialjaded.org>, <alarabialjadeed.com>, <alarabialjadeed.net>, <alarabialjadeed.org>, <alarabyaljadeed.com>, <alarabyaljadeed.net> and <alarabyaljadeed.org> 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 August 4, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 8, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 2016 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 August 23, 2016.

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 August 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2016.

The Center appointed Steven A. Maier as the sole panelist in this matter on September 29, 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 First and Second Complainants are companies registered in England and Wales. The Third Complainant is a company registered in Lebanon. The Second and Third Complainants are owned or controlled by the First Complainant. The three Complainants are hereinafter referred to as “the Complainants”.

The Complainants operate an international news outlet headquartered in London which is known in English as “Al Araby Al Jadeed”.

The Complainants are the proprietors of various trademark registrations which include the following:

- United Kingdom trademark number 3035729 for the word mark AL JADEED, registered on April 18, 2014 in Classes 16, 35, 38 and 41 with a filing date of December 20, 2013;

- United Kingdom trademark number 3035758 for the figurative mark shown below (“Figurative Mark 1”), registered on April 25, 2014 with a filing date of December 20, 2013;

- European Union trademark number 14820062 for the figurative mark shown below (“Figurative Mark 2”), registered on March 18, 2016 with a filing date of November 20, 2015.

The Complainants have a further 21 registrations for Figurative Mark 2 in numerous territories in the Middle East and North Africa with differing filing dates, the earliest of which is May 7, 2014.

The disputed domain names were registered on the following dates:

- <alarabyaljadeed.com>, <alarabyaljadeed.net>, <alarabyaljadeed.org>, <alarabialjaded.info>, <alarabialjaded.net>, <alarabialjaded.org>, <alarabialjaded.com> and <alarabialjadeed.org> on April 10, 2014;

- <alarabialjadeed.com> and <alaravialjadeed.net> on May 11, 2015.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have rights in the name and trademark AL ARABY AL JADEED. They say that the name is a transliteration of the Arabic term shown below, which means “The New Arab”:

العربي الجديد

The Complainants claim they have traded under the mark AL ARABY AL JADEED since the launch of their website at “www.alaraby.co.uk” in March 2014. They say that the mark has consistently been used since that date in connection with a news outlet covering newspaper and online media aimed at Arabic and English speakers in the UK and the Middle East. They submit that, in addition to the Arabic version of the name as reflected in Figurative Mark 2, they also trade under the transliterated version of the mark as well as the English version “The New Arab”.

In addition to their registered trademarks, the Complainants also rely on unregistered rights which they say stem from their operation of the website referred to above as well as a presence on social media including Facebook and Twitter. They also refer to a newspaper launched in September 2014. The Complainants submit that they have made a substantial investment in the mark AL ARABY AL JADEED by way of advertising and otherwise and that they have received due acknowledgment by way of readership, social media, industry recognition and search engine positioning. They state that their website obtained approximately 260,000 unique views in its first 30 days of operation and that by November 2015 it was receiving approximately nine million views per month worldwide.

The Complainants refer to the registrar responses in this administrative proceeding which identified the Respondent Linda Mattar as the registrant of all the disputed domain names. The Complainants provide evidence that an earlier registrant of at least two of the disputed domain names was Mr. Zaki Chehab of Film Matters Ltd and submit that he should be inferred to have been the original registrant of all the disputed domain names. The Complainants allege that, in response to a solicitors’ letter to Mr. Chehab dated March 22, 2016, Mr. Chehab transferred all of the disputed domain names to the Respondent. They also exhibit a response from Respondent Linda Mattar dated July 1, 2016 in which she claims recently to have disposed of all the disputed domain names in response to “an offer [she] could not refuse.” The Complainants submit that no such transfer has, however, been recorded.

The Complainants submit that none of the disputed domain names was used for the purpose of any website until February 2016. At that time, they say that Mr. Chehab, who had previously operated a news website under the name “Arabs Today”, amended his website logo to a design including a bird motif similar to the Complainants’ Figurative Marks 1 and 2 and began to use the disputed domain names to resolve to that website. Their solicitors’ letter dated March 22, 2016 also complains of that matter.

The Complainants contend that the disputed domain names are identical or confusingly similar to a trademark or service mark in which they have rights. The Complainants submit that three of the disputed domain names, <alarabyaljadeed.com>, <alarabyaljadeed.net> and <alarabyaljadeed.org> are identical to the Complainants’ trademark AL ARABY AL JADEED. They submit that the remainder of the disputed domain names are identical to their trademark but for the replacement of the letter “y” with the letter “i” and/or the replacement of the letters “ee” with the letter “e”. The Complainants further submit that all of the disputed domain names are aurally identical to the Complainants’ trademark and could not be distinguished from that trademark by Arabic speakers in particular, who represent the Complainants’ primary audience.

The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainants say that they have never granted any party any licence or permission to use their mark AL ARABY AL JADEED. The Complainants further submit that they are not aware of any registrant of the disputed domain names ever previously having traded under the name or mark AL ARABY AL JADEED.

The Complainants submit that the disputed domain names have been registered and are being used in bad faith. The Complainants point out that the first tranche of the disputed domain names were registered one month after the launch of the Complainants’ website in March 2014. They also refer to the fact that the disputed domain names were not used for any website until February 2016, when Mr. Chehab began to use them in connection with his modified website logo referred to above. The Complainants contend that such use by Mr. Chehab was intended to take unfair advantage of the Complainant’s goodwill in their trademark AL ARABY AL JADEED by misleadingly diverting Internet traffic intended for the Complainants to his competing news website. The Complainants also rely on Mr. Chehab’s transfer of the disputed domain names in bulk after receipt of their solicitors’ letter, and to the Respondent Linda Matter’s response to the Complainants, all of which they submit provide further evidence of registration and use of the disputed domain names in bad faith.

The Complainants request the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Even in a case where the Respondent has not contested the Complaint, it is still necessary for the Complainants to establish that all of the three above elements are present.

A. Identical or Confusingly Similar

The Panel is satisfied on the evidence provided by the Complainants that the Arabic script which forms a significant part of Figurative Mark 2 is properly transliterated as AL ARABY AL JADEED. The Panel is also satisfied that the Complainants have traded under the name and mark AL ARABY AL JADEED and that that mark has become distinctive of the Complainants and their services. The Panel accepts the Complainants’ submission that three of the disputed domain names are identical to the mark AL ARABY AL JADEED (but for the generic Top-Level Domain (“gTLD”) in each case) and that the remaining disputed domain names differ from the mark only by the substitution of the letter “i” for the letter “y” and/or the substitution of the letter “e” for the letters “ee”. The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainants’ submissions set out above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain names. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration or use of the disputed domain names, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

As a preliminary matter, it is necessary to establish whether the Complainants used the mark AL ARABY AL JADEED prior to the registration of the disputed domain names in April and May 2014. While the Complainants submit that they used the mark in connection with their website from March 2014 onwards, the evidence they have submitted in this regard does not appear to the Panel to include any material dated before November 2014. The Panel has, however, independently established by way of a date-limited Google search that reference appears to have been made to the mark AL ARABY AL JADEED in a press release issued by the Complainants on March 30, 2014 which included both Figurative Mark 2 and the transliterated name.¹ The search also produced an apparently independent news report dated March 23, 2014 which refers to a proposal to launch a new news channel to counter the Al Jazeera channel, to be named “Al-Arabi al-Jadeed”. The Panel is therefore satisfied that the Complainants’ use of the mark AL ARABY AL JADEED (or at least their intention to use that mark) was in the public domain by the end of March 2014.

Having so found, the Panel infers that the disputed domain names were registered in bad faith. Three of the disputed domain names are essentially identical to the Complainants’ trademark and the remainder comprise minor misspellings, or alternative spellings, thereof. The Panel considers it significant that the disputed domain names were registered within one or two months of the Complainants’ launch of their trademark and that they were not used for the purpose of any website for a considerable period following registration. While the Respondent has been provided with an opportunity to explain the registration of the disputed domain names, it has failed to do so. The Panel therefore concludes on balance that the disputed domain names were likely to have been registered in the knowledge of the Complainants’ trademark AL ARABY AL JADEED and with the intention of taking unfair advantage of the Complainants’ said trademark.

As to the use of the disputed domain names, while the Complainants say that Mr. Chehab used the disputed domain names from February 2016 onwards to direct to his competing website, using his misleading revised logo, they do not provide any evidence of this redirection and not all the annexures referred to in their solicitors’ letters dated March 22, 2016 are included in their submissions. Furthermore, the Panel’s independent review of the Internet Archive website suggests that only one of the disputed domain names, <alarabyaljadeed.com>, was used in the manner described by the Complainants.

Nevertheless, on the basis of the Complainants’ submissions and evidence in this proceeding, which are uncontradicted by the Respondent, the Panel finds on balance that all of the disputed domain names are likely to have been registered by the same registrant and to have been dealt with in bulk throughout their existence, including their transfer to the Respondent Linda Mattar and her claimed disposal of them. Furthermore, in circumstances where other indications of bad faith are present, the Panel does not consider it significant that the majority of the disputed domain names may only have been passively held (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel concludes in all the circumstances that the disputed domain names have been registered and are being used 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 disputed domain names, <alarabialjaded.com>, <alarabialjaded.info>, <alarabialjaded.net>, <alarabialjaded.org>, <alarabialjadeed.com>, <alarabialjadeed.net>, <alarabialjadeed.org>, <alarabyaljadeed.com>, <alarabyaljadeed.net> and <alarabyaljadeed.org>, be transferred to the Complainants.

Steven A. Maier
Sole Panelist
Date: October 5, 2016

¹ A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.