WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dubizzle Limited v. Shoaib Naeem
Case No. D2017-0395
1. The Parties
The Complainant is Dubizzle Limited 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 Shoaib Naeem of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <dubizzleguru.com> ("Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2017. On February 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 proceedings commenced on March 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 28, 2017.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 12, 2017. 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 following facts are undisputed.
The Complainant is organized and existing under the laws of the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. The Complainant was founded in 2005 and has its corporate headquarters in Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. The Complainant is a leading online classifieds and community portal for the Middle East and North Africa ("MENA") region. The Complainant facilitates trade by providing an online marketplace where sellers can list items for sale and buyers can search listings and connect with sellers.
The Complainant is the owner of trademark registrations across various jurisdictions, including three trademark registrations in the United Arab Emirates ("UAE") for the word mark DUBIZZLE with registration numbers 194179, 194180 and 194181 for services in classes 35, 38 and 42 with registration dates in 2015 ("Trademark").
Furthermore, the Complainant owns and operates websites at several domain names incorporating the Trademark, for instance <dubizzle.com>, <dubizzle.tn>, <dubizzle.co.in>, <dubizzle.net.in>. The Complainant's primary domain name <dubizzle.com> is the eighth most popular website in the UAE and the 2,996th most popular globally.
The Domain Name was registered on October 17, 2016.
5. Parties' Contentions
Insofar as relevant, the Complainant contends the following:
The Complainant referred to a previous domain name dispute decision under ".com.pk", known as Dubizzle Limited BVI v. Muhammad Ammad Siddique, DNDRC Case No. C2015-0001 and has stated that the Trademark is internationally renowned and highly recognizable.
The Domain Name can be considered as capturing, in its entirety, the Complainant's Trademark and simply adding the generic term "guru" to the end of the Trademark. The mere addition of this generic term to the Trademark does not negate the confusing similarity between the Domain Name and the Trademark under the Policy, paragraph 4(a)(i), and the Domain Name must be considered confusingly similar to the Trademark.
The Respondent's use of the Domain Name contributes to the confusion. The Respondent is using the Domain Name to host an online classifieds website which advertises available jobs in various regions of the United Arab Emirates, which suggests that the Respondent intended the Domain Name to be confusing with the Trademark.
The Respondent is not sponsored by or affiliated with the Complainant in any way. No license or authorization of any kind has been given by the Complainant to the Respondent to use the Trademark.
At the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Trademark and that registration of domain names containing well-known trademarks constitutes bad faith per se. This is emphasized by the numerous trademarks filed in connection with the Complainant's business prior to the Respondent's registration of the Domain Name and the fact that the Trademark has achieved a strong brand recognition in the areas where the Complainant operates; namely in countries and cities across the MENA region, including the UAE where the Respondent resides.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark in its entirety and adds the word "guru". The Panel finds that the dominant part of the Domain Name is "dubizzle" and that the element "guru" is merely descriptive. After all, "guru" associates to a teacher, guide, expert or master of certain knowledge or field. Also, the element "guru" is not uncommon in domain names to describe an online expert guide.
The addition of ".com" is largely irrelevant in the determination of the confusing similarity between the signs, see cases Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Also see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: "[T]he fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks."
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
In addition, on the website to which the Domain Name resolves, the Respondent offers a service which directly competes with the Complainant's own offerings, namely, an online classifieds website offering various products and services including job openings. The Panel finds that the offering of products and services, coupled with the unauthorized use of the Trademark in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under paragraph 4(c)(iii) of the Policy.
Therefore, the Respondent, for purposes of the Policy, has not been using the Domain Name for a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name. The Respondent does not hold any trademark rights relating to DUBIZZLE, has not obtained a license and is not authorized in any other way to use the Trademark.
Finally, given the circumstances of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions "non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Trademark is, as well as the activities of the Complainant, well known especially in the MENA region. Accordingly, in the Panel's view, the Respondent must have been aware of the Complainant's existence and rights at the time of registering the Domain Name.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. In addition, the high similarity between the websites of the Respondent and the Complainant strongly indicate that the design of the website under the Domain Name imitates the original website of the Complainant.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <dubizzleguru.com> be transferred to the Complainant Dubizzle Limited.
Willem J. H. Leppink
Date: April 26, 2017