WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fadaat Media Limited, Alaraby Aljadeed Limited, Rainbow Media SAL v. Zaki Moussa, Film Matters Ltd
Case No. D2016-2073
1. The Parties
1.1 The Complainants are Fadaat Media Limited and Alaraby Aljadeed Limited, both of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), and Rainbow Media SAL of Lebanon, represented by Kemp Little LLP, United Kingdom.
1.2 The Respondent is Zaki Moussa, Film Matters Ltd of Middlesex, United Kingdom, represented by Silverman Sherliker LLP, United Kingdom.
2. The Domain Names and Registrar
2.1 The disputed domain names <alarabyaljadeedtoday.info> and <alarabyaljadeed.tv> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2016. On October 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant (identifying Zaki Moussa as the "Registrant Name" and "Film Matters Limited" as the "Registrant Organisation") for both of the Domain Names and providing contact details.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2016. The Response was filed with the Center on November 8, 2016, but purports to have been filed in the name of "Samir Mousa" (aka "Samir Moussa") with an address in the Netherlands.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 11, 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.
3.5 On November 14, 2016 the Complainants sought to file a supplemental submission comprising certificates of the non-UK and non-EU trade marks relied upon.
4. Factual Background
4.1 The Complainants in these proceedings are related companies. They are connected with or operate an international news outlet, headquartered from London, known as, or by reference to the name العربي الجديد in Arabic script mark and its transliteration, "Al Araby Al Jadeed". As the record indicates, these terms literally translate into English as 'The New Arab'. The activities of this business are aimed at Arabic speakers and English speakers in the UK and the Middle East.
4.2 The Complainants (or at least one of them) launched its Arabic news website under the names العربي الجديد and "the New Arab" from the URL "www.alaraby.co.uk" in March 2014. It also launched a newspaper under the name العربي الجديد in September 2014.
4.3 The Complainants are the owners of various registered trade marks and registered trade mark applications in the Europe and various countries in the Middle East that incorporate the terms الجديد العربي or "Al Araby Al Jadeed". The registered trade marks include:
(i) European trade mark no. 14820062 filed on November 20, 2015 in classes 16 and 21; and
(ii) Lebanese trade mark no. 155118 registered on January 29, 2014 in classes 9, 16 and 41.
4.4 These two registered marks are registered in the name of one of the Complainants (i.e. Fadaat Media Limited) and the marks each take the following form:
4.5 The Respondent (i.e. Film Matters Ltd) is a United Kingdom registered company. At all material times Zaki Moussa has been the sole shareholder and director of the Respondent, Film Matters Limited. He also is the director of a separate United Kingdom registered company, Arabs Today Limited. He sometimes uses the name "Zaki Chehab".
4.6 Mr. Moussa is a television journalist and author. He and/or the Respondent has since about 2010 provided news information under Arabic terms, the transliteration of which is "alaraby alyoum" or "alarab alyoum", which can be translated into English as "Arabs Today". It has conducted its activities from a website or websites operating from the domain name <arabstoday.com> and <arabstoday.net>.
4.7 Mr. Moussa is also the owner of United Kingdom trade mark no. 2652588 filed on January 30, 2013 and entered into the register on May 24, 2013. The mark takes the form of stylised Arabic script for the term "Arabs Today" in Arabic.
4.8 The <alarabyaljadeed.tv> Domain Name was registered on April 10, 2014 and the <alarabyaljadeedtoday.info> Domain Name was registered on March 23, 2016. They were registered by Mr. Moussa. At the same time as Mr. Moussa registered the <alarabyaljadeedtoday.info> Domain Name, he registered other domain names that incorporated the term "alarabyaljadeed" or variants of the same.
4.9 It would appear that these proceedings form part of an ongoing dispute between the Complainants and the Respondent / Mr. Moussa and/or persons who presently hold domain names registered by the Respondent / Mr. Moussa. In particular:
(i) In March 2016 (i.e. after the registration of the <alarabyaljadeed.tv> Domain Name, but before the registration of the <alarabyaljadeedtoday.info> Domain Name) the Complainants' solicitors sent a letter to the Respondent and Mr. Moussa complaining that the registration of various domain names infringed the Complainants' trade mark rights and demanding that they be transferred to the Complainants.
(ii) Following that letter a number of these domain names were either transferred into the name of another person or attempts were made to do so.
(iii) On June 9, 2016, the Respondent and Mr. Moussa gave various undertakings in writing to the Complainants.
(iv) On August 4, 2016, the Complainants commenced earlier UDRP proceedings against the person into whose name a number of domain names had been transferred. Initially, these domain names included the <alarabyaljadeed.tv> Domain Name, but this Domain Name was withdrawn from those proceedings when in response to the Center's registrar request, the Respondent was identified as the registrant.
5. Parties' Contentions
5.1 The Complainants set out the factual background to this matter and refer to various trade marks said to be owned by the Complainants, including the two registered trade marks identified in the Factual Background section of this decision. They contend that where a complainant has a registered trade mark in Arabic, a domain name that incorporates the English transliteration of the Arabic trade mark can be identical or confusingly similar to that trade mark. Therefore, they contend that the Domain Names are identical or confusingly similar to these registered trade marks.
5.2 Further, the Complainants contend that they have unregistered rights in the United Kingdom and the Middle East by reason of the operation of their website and newspaper. They appear to be claiming unregistered rights in each of the terms "الجديد العربي", "Al Araby Al Jadeed" and "The New Arab".
5.3 The Complainants contend that the various domain names registered by the Respondent were not initially actively used, but that in mid-February 2016, they were used to redirect traffic to the Respondent's website and the logo used on that website was changed so as to include a bird motif, which it is claimed was an attempt to mimic the use of a bird as part of the Complainants' mark.
5.4 The Complainants maintain that the Respondent has no right or interest in the Domain Names.
5.5 Further, the Complainants contend that the Respondent's actions in registering a series of domain names, including the <alarabyaljadeed.tv> Domain Name, shortly after what is said to be the highly successful launch of the Complainant's Website together with the subsequent alleged use of various domain names, is said to demonstrate bad faith registration and use. In support of their contention that this launch was "highly successful", the Complaint contends that the Complainants' website generated over 260,000 hits in its first 30 days of operation.
5.6 The Complainants also claim that the acts of transfer and/or attempted transfer of the Domain Names and the use of a proxy service also support a finding of bad faith registration and use.
5.7 Further, the Complainants contends as follows:
"To the extent that the [Domain Names] or one of them has or have been transferred to Samir Moussa, these have clearly been received by Zaki Chehab/Moussa in bad faith, and without any real or legitimate rights in or to the [Domain Names]."
5.8 As has already been recorded earlier on in this decision the Response has not been filed in the name of the Respondent, but instead in the name of Samir Mousa (aka Samir Moussa). It is claimed that notwithstanding the information available on the WhoIs records for the Domain Names, the Domain Names were in fact transferred to Mr. Samir Mousa on April 7, 2016 and that he is the legal and beneficial owner of the Domain Names. Various documents are attached to support that contention.
5.9 According to the Response, Mr. Samir Mousa is not a journalist and is not involved in publishing or television. Instead he has recently "worked as a consultant on various issues relating to childcare".
5.10 The Response claims that the relationship between the various Complainant companies is not properly explained, but does not put forward any positive case that the Complainants are not involved in a business operating under the AL ARABY AL JADEED mark. It further complains that the original Complaint did not provide copies of the certificates for some of the trade marks relied upon. The Response also contends that no evidence is supplied showing that the Complainants' business is well-known.
5.11 The Response claims that the words of "The New Arab" in the Complainants' marks are "laudatory, non-distinctive and/or descriptive of the content of articles, publications or broadcasts about Arabs or events in the Arab countries". It claims that the only distinctive aspect of the Complainants' mark is the bird motif. It also claims that the Complainants do not own any unregistered rights in these terms.
5.12 The Response contends that the Respondent:
"registered the Disputed domain names for possible refreshed and updated reporting of news and to prevent others registering domain names which he believed could cause confusion with his own established business and existing websites."
5.13 In circumstances where the Respondent was and is the owner of a registered trade mark for a term that translate as "Arabs Today", the Response appears to claim that the Respondent has a right or legitimate interest in the Domain Names.
5.14 The Response also denies that all of the domain names referred to by the Complainants in the Complaint were used to redirect Internet traffic to the Respondent's website, but it does not appear to be denied that at least some of them were used in this fashion.
5.15 The Response further denies that the registration and use of the Domain Names was in bad faith.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainants must make out their case in all respects under paragraph 4(a) of the Policy. Namely, the Complainants must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. However, before it does so, it needs to address two procedural issues. The first is whether the Panel should accept the Complainants' supplemental submission. The second is who the proper "Respondent" in these proceedings is.
6.3 The circumstances in which a party can file a supplemental submission in UDRP proceedings is addressed in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"). Generally, it is necessary for the filing party to demonstrate exceptional circumstances, before that submission is admitted. Regardless of whether the circumstances in this case can really be classified as "exceptional", the Panel is prepared to accept the Complainant's supplemental filing.
6.4 The reason is that the submission addresses a point about which a complaint was made in the Response, i.e. that certificates of some Middle Eastern trade marks identified and relied upon by the Complainants in the Complaint had not been provided. The Panel is not persuaded that the Respondent was prejudiced by that failure. There is no suggestion that the information provided was insufficient to allow the Respondent to prepare its case. Further, the material has little or no impact on the outcome of the case; given that the existence of at least one relevant European trade mark is not disputed and where it also does not appear to be disputed that the term relied upon in this mark has been used from a date the predates the initial registration dates of the Domain Names.
6.5 So far as the identity of the Respondent is concerned, the Panel has treated Film Matters Ltd as the Respondent for the purposes of this decision. The reasons for this are as follows:
(i) This is the entity that has been identified as the registrant of the Domain Names by the Registrar. Insofar as the Registrar has failed to action any transfer request, that is a matter for Film Matters Ltd and/or Mr. Samir Mousa to take up with the Registrar;
(ii) Even had the Domain Names been transferred, it would make no difference. The Panel believes that a panel can address the questions of rights or legitimate interests and bad faith by reference to the person who actually controls the domain names in issue (see for example Telefire Fire & Gas Detectors Ltd. v. Easy Property Management Group / Park Sanghoon, WIPO Case No. D2013-1003). Mr. Samir Mousa is the brother of Mr. Zaki Moussa and no reason, let alone a credible one, has been provided as to why Mr. Samir Mousa (who is said to be not a journalist but someone who works in childcare) might have some independent interest in holding or using the Domain Names. The Panel therefore concludes on the balance of probability that the Complainants are correct in their contention that the Domain Names are still under Mr. Zaki Moussa and Film Matters Ltd's control.
6.6 In any event, for reasons that the Panel addresses in the context of rights and legitimate interests and bad faith below, even if the Domain Names were effectively transferred to Mr. Samir Mousa and they are now under this individual's independent control, the Panel does not think that this makes any difference to the outcome of this case.
A. Identical or Confusingly Similar
6.7 It is not seriously disputed that at least one of the Complainants owns at least a mark or marks that contains the words الجديد العربي or "Al Araby Al Jadeed". However, this is one of those cases where the marks relied upon contain textual and non-textual elements and the Respondent contends that the textual elements are so non-distinctive that absent the non-textual elements that trade mark would not have proceeded to registration.
6.8 Previous cases on this issue were discussed by the panel in Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531, which reached the following conclusion:
"Instead, the Panel is of the view that the dismissal of a complaint under the first heading of the Policy on the ground that only a non-distinctive element of a registered trade mark has been taken, should be restricted to those cases where it is clear that the element of the trade mark relied upon is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the mark is registered."
6.9 The "completely devoid of distinctive character" test was also adopted by the panel in Souq.com FZ LLC v. Benny Bertelsen, Advanced Digital Solutions, WIPO Case No. D2015-2261.
6.10 Adopting this test, the Panel is not persuaded that the terms الجديد العربي, "Al Araby Al Jadeed" and "The New Arab" are so completely devoid of distinctive character for a news outlet that these elements of the relevant registered trade marks should be disregarded when it comes to assessing the similarity of the Domain Names to the marks in which the Complainants claim rights.
6.11 The Panel also accepts that the Domain Names can only be sensibly read as incorporating the words "Al Araby Al Jadeed" (i.e. the Latin text transliteration of الجديد العربي). In each case the Domain Names combine that phrase with a top level domain, and in the case of one of the Domain Names it is also combined with the English word "today". However, these additions do not so change the reading of the Domain Names that they prevent a finding of confusing similarity as that term is understood under the Policy (as to which see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 regarding <unofficialblackberrystore.com>).
6.12 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(i) of the Policy. It is unnecessary in these circumstances to consider the Complainants' alternate argument based upon alleged rights under the law of passing off.
B. Rights or Legitimate Interests
6.13 The Respondent does not appear to dispute that it does not use the name "Al Araby Al Jadeed" for its business. Instead, it has traded under a name that transliterates as "Alaraby alyoum" or "Alarab alyoum". Given this it is difficult to see how it might claim any right or legitimate interest under the Policy so far as Domain Names containing the words "Al Araby Al Jadeed" are concerned. In this respect, the Panel rejects any suggestion that the term "Al Araby Al Jadeed" is so descriptive in nature that any use made of it by the Respondent to redirect traffic to its own website would involve taking advantage of the descriptive nature of those words. Words that translate as "The New Arab" are not inherently descriptive of a media website directed to Arabs or Arabic speakers.
6.14 The Response claims that the Respondent registered the Domain Names "to prevent others registering domain names that could cause confusion with its own established business". However, even if this is correct, and for the reasons that the Panel sets out when assessing whether the Domain Names were registered or used in bad faith, the Panel is of the view that both of the Domain Names were registered with the Complainants' mark in mind and in the case of the <alarabyaljadeed.tv> Domain Name, with the intention of preventing the Complainants from using the same.
6.15 A registrant does not have a right or legitimate interest in a domain name that incorporates the mark of another, even if it considers that mark to be similar to its own mark.
6.16 Further, if the Respondent has no right or legitimate interest in the Domain Names, then Mr. Samir Mousa has even less of an interest given that he cannot point to any name or mark that he is using that is similar to the Domain Names.
6.17 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.18 The Response complains that the Complainants have failed to explain the nature of the relationship between them and also have failed to demonstrate that the business with which they claim to be involved has at any time become well-known. Instead, it merely contends that the Domain Names were registered to prevent others registering domain names that could cause confusion with its own established business.
6.19 In the absence of the Response putting forward any positive case that the Complainants or any of them are not involved in the "Al Araby Al Jadeed" business, the Panel is prepared to accept at face value the Complainants' contention that they are so connected with that business. The fact that at least one of the Complainants is the owner of trade marks and trade mark applications that incorporate that term, suggests that the Complainants' claims in this respect are correct.
6.20 Further, regardless of the degree of reputation that the Complainants have developed in the "Al Araby Al Jadeed", the Panel is prepared to accept that the earliest of these Domain Names were registered by the Respondent with knowledge of that business. In particular, the Panel accepts that it can reasonably be inferred from the timing of the registration of the <alarabyaljadeed.tv> Domain Name; i.e. just shortly after the launch of the Complainants' business, that the Respondent was aware of the Complainants' business and name at the time of that registration.
6.21 In this respect, the Panel also finds it significant that the Response is silent as to the state of the Respondent's knowledge of the Complainants' business and name at the time of that first registration. Although a complainant bears the burden of proof of establishing the requirements of the Policy, where a respondent participates in the proceedings but fails to address the key issues of its knowledge or motivation in registering a disputed domain name, it should not be surprised if a panel draws an adverse inference from that failure (see, for example, Nexans S.A. v. Mr. Edip Özdemir / MXN Kablo San. Tic. Ltd. Sti., WIPO Case No. D2015-1056).
6.22 So far as the motives for registration are concerned, the Response does offer an explanation. The registrations are said to have been in order "to prevent others registering domain names that could cause confusion with its own established business". Perhaps the Respondent honestly believed this, having discovered and taken exception to the Complainants' adoption of a business name that it considered to be too close to its own. However, even if that is so, that does not excuse or justify the Respondent from having registered Domain Names that can only be sensibly read as incorporating the name of that different business. Further, the Domain Names are just two of a larger number of registrations by the Respondent. Accordingly, the registration and holding of the Domain Names constitutes activity that falls within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(ii) of the Policy.
6.23 Further and in any event there is the use made by the Respondent of a least a number of domain names that incorporate the "Al Araby Al Jadeed" name, to redirect interest users to the Respondent's website. Such activity prima facie falls within the scope of paragraph 4(b)(iv) of the Policy. Whether either of the Domain Names were ever used in this matter is not clear, but ultimately the Panel does not think that this matters. It is still indicative of the Respondent's intentions as to the registration and holding of the Domain Names is concerned.
6.24 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(iii) of the Policy.
6.25 Further, even if Film Matters Ltd was the proper Respondent in these proceedings and the true position is that Mr. Samir Mousa independently controls the Domain Names, again the Panel does not think it makes a difference.
6.26 If a transfer were effected, then the issue of "bad faith" registration would need to be assessed not from the date of original registration but from the date of transfer (see paragraph 3.7 of the WIPO Overview 2.0). The Response offers no explanation for that transfer to Mr. Samir Mousa. In the absence of any such explanation, the Panel concludes that it is more likely than not that the Domain Names were transferred to him both with a view to defeating any claim brought against the Respondent and/or with the intention of using the Domain Names in some manner that would take unfair advantage of the Complainants' trade mark rights. This would also be sufficient for a finding of bad faith registration and use (see, for example, Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
6.27 The Complainants have sought the transfer of both Domain Names. This is by far the most common remedy sought and ordered in proceedings under the Policy. In the case of the <alarabyaljadeed.tv> Domain Name, there is no reason why it should not be granted to the Complainants. Given that there are multiple Complainants and the Complaint does not specify to which of the Complainants the Domain Names should be transferred, the Panel will order transfer to Fadaat Media Limited, which is the owner of a number of the trade marks relied upon by the Complainants.
6.28 The position so far as the <alarabyaljadeedtoday.info> Domain Name is concerned strikes the Panel as a little more complex. Although this Domain Name incorporates the Complainants' "Al Araby Al Jadeed" name, the Response also contends that both the terms "Al Araby" and "today" are to be found in one form or another in the Respondent's mark. In other words, the entirety of the textual elements of the Respondent's mark (albeit with one half of the text of that mark transliterated and the other half translated) is to be found in this Domain Name. Further, as far as the Panel can tell, the Respondent's mark predates the Complainant's mark in business and has actually been used by the Respondent in respect of genuine journalistic activity. This is, therefore, not a case where the Respondent's mark is pretextual. This in turn raises the question of whether cancellation rather than transfer would be the appropriate remedy in this case.
6.29 In this respect the Panel notes that there are a large number of decisions under the Policy which suggest that even though there is a presumption that a successful complainant is entitled to an order that the domain name be transferred to it, there remains discretion on the part of a panel to order cancellation instead of transfer if it considers that to be a more appropriate remedy; see for example Lilly ICOS LLC v. Tudor Burden, Burden Marketing, WIPO Case No. D2004-0794. However, these cases have tended to be ones where the domain name in issue also contained an unrelated third party mark and the panel was therefore reluctant to place this in the hands of the complainant. Arguably, a panel should take a somewhat more robust view where, as here, the additional mark is not the mark of a third party but of the respondent.
6.30 Further, the Panel is also mindful that the approach adopted in the Lilly ICOS LLC case supra does not appear to have been universally accepted among UDRP panelists. In this respect, the Panel notes the decision and reasoning in WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com,WIPOCase No. D2012-0674.
6.31 In the circumstances, and in the absence of substantive submissions or argument by either of the Parties on this point, the Panel has concluded that it should order transfer of the <alarabyaljadeedtoday.info> Domain Name to Fadaat Media Limited as well.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <alarabyaljadeedtoday.info> and <alarabyaljadeed.tv> be transferred to Fadaat Media Limited.
Matthew S. Harris
Date: January 3, 2017