WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fadaat Media Limited and Alaraby Aljadeed Limited and Rainbow Media SAL v. Samir Moussa

Case No. D2017-0739

1. The Parties

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

Respondent is Samir Moussa of Rotterdam, the Netherlands.

2. The Domain Names and Registrar

The disputed domain names <alarabyaljadeedtoday.com>, <alarabyaljadeedtoday.net> and <alarabyaljadeedtoday.org> (the “Disputed Domain Names”) 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 April 12, 2017. On April 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 26, 2017, Complainants submitted an amended Complaint to correct an administrative formality.

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 Respondent of the Complaint, and the proceedings commenced on May 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2017.

The Center received an informal communication from a third party on May 22, 2017. On May 30, 2017, Complainants submitted an unsolicited supplemental filing.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 31, 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

Complainants in these proceedings are related companies. They are connected with or operate an international news outlet, headquartered in 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 United Kingdom and the Middle East.

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.

First Complainant, Fadaat Media Limited, is the holder of various registered trade marks and trade mark applications in the Europe and various countries and jurisdictions in the Middle East that incorporate the terms الجديد العربي or “Al Araby Al Jadeed”. The registered trade marks include European Union Trade Mark (“EUTM”) no. 14820062, represented below, filed on November 20, 2015, registered on March 8, 2016, in classes 16 and 21:

The Disputed Domain Names were registered on March 23, 2016. The Disputed Domain Names are registered by Respondent, Samir Moussa, who appears to be the brother of Zaki Moussa (who sometimes used the name “Zaki Chehab”). Zaki Moussa has been the respondent in a previous UDRP proceeding initiated by Complainants, involving the domain names <alarabyaljadeedtoday.info> and <alarabyaljadeed.tv> (see Fadaat Media Limited, Alaraby Aljadeed Limited, Rainbow Media SAL v. Zaki Moussa, Film Matters Ltd, WIPO Case No. D2016-2073). However, in that case, a response had been filed not in the name of Zaki Moussa, but in the name of Samir Moussa, Respondent in the present case.

The Disputed Domain Names refer to a parking page displaying pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainants

Complainants consider the Disputed Domain Names to be confusingly similar to a trademark in which they claim to have rights. Complainants further claim that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to Complainants, Respondent has not used the Disputed Domain Names in connection with a legitimate use. Also, according to Complainants, Respondent has not been commonly known by the Disputed Domain Names. Finally, Complainants claim that the Disputed Domain Names were registered and are being used in bad faith. Complainants submit that Respondent’s brother, Zaki Moussa, and/or the company of which Zaki Moussa is the director and sole shareholder retain(s) control over the Disputed Domain Names, hereby violating an undertaking made towards Complainants.

B. Respondent

Although Respondent had filed a response in a previous UDRP proceeding between Complainants and Zaki Moussa (aka Zaki Chehab), Respondent did not participate in the current proceedings. However, the Center received an informal communication by Zaki Chehab, claiming that the latter did not have any control over the Disputed Domain Names. Zaki Chehab also seems to suggest that other organizations use names similar to Complainants’ trade mark or Alaraby Aljadeed name.

6. Discussion and Findings

6.1. Preliminary Issue: Supplemental Filing

Complainants submitted an unsolicited Supplemental Filing in response to Respondent’s brother’s communication, further discussing the involvement of Respondent’s brother in this proceeding.

Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of Supplemental Filings. In this case, the Panel will exercise its discretion to admit the Supplemental Filing, noting that its consideration was not pivotal to the Panel’s decision.

6.2. Substantive Issues

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on Complainants to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Names. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus for Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

(i.) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii.) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii.) the Disputed Domain Names have been registered and are being used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

It is not disputed that at least one of Complainants is the holder of at least a mark or marks that contain the words الجديد العربي or “Al Araby Al Jadeed”. The Panel also accepts that the Disputed Domain Names can only be sensibly read as “Al Araby Al Jadeed Today”. The addition of the English word “today” to Complainants’ AL ARABY AL JADEED trade mark does not so change the reading of the Disputed Domain Names that it prevents a finding of confusing similarity as understood under the Policy (see Fadaat Media Limited, Alaraby Aljadeed Limited, Rainbow Media SAL v. Zaki Moussa, Film Matters Ltd, supra).

Accordingly, Complainants have made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.

It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Names and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s registration and use of the Disputed Domain Names was not authorized by Complainants. There are no indications that a connection between Complainants and Respondent existed, other than the dispute involving Complainants and Respondent’s brother. For the reasons that the Panel sets out when assessing whether the Disputed Domain Names were registered and used in bad faith, the Panel is of the view that the Disputed Domain Names were registered and/or acquired with Complainants’ mark in mind. Respondent has not presented evidence or arguments sufficient to rebut Complainants’ prima facie case in this regard.

Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors are (i) the registration of a 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 the registrant has engaged in a pattern of such conduct, and (ii) the registration of a domain name primarily for the purpose of disrupting the business of a competitor. The passive holding of a domain name can also constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, supra; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.

In the instant case, Respondent seems not to make active use of the Disputed Domain Names beyond the use for PPC pages. Although Respondent submitted a response in a previous UDRP proceeding between Complainants and Respondent’s brother involving similar domain names incorporating Complainants’ mark, Respondent did not submit a response in the present proceedings. Respondent’s involvement in the previous UDRP proceeding suggested Respondent’s bad faith intention to defeat a claim of bad faith registration and use by Respondent’s brother (see Fadaat Media Limited, Alaraby Aljadeed Limited, Rainbow Media SAL v. Zaki Moussa, Film Matters Ltd, supra). The registration of the Disputed Domain Names in the present case serves as a further indication of Respondent’s bad faith intention. While Respondent is not a competitor of Complainants, Respondent’s brother is a journalist working for an Arab newspaper in London. The evidence of the file suggests that Respondent has registered the Disputed Domain Names in concert with his brother, or at least with the purpose of disrupting the business of a competitor to Respondent’s brother. Moreover, Respondent did not register one, but multiple domain names incorporating Complainants’ mark, hereby engaging in a pattern. While this pattern may not make it impossible for Complainants to reflect their mark in a corresponding domain name, such a pattern is disruptive and possibly damaging Complainants’ reputation.

Finally, Respondent provides no explanation for the registration of the Disputed Domain Names.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were 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, <alarabyaljadeedtoday.com>, <alarabyaljadeedtoday.net>and <alarabyaljadeedtoday.org> be transferred to Complainants.

Flip Jan Claude Petillion
Sole Panelist
Date: June 14, 2017