WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yusuf A. Alghanim & Sons W.L.L. v. Anees Salah Salameh
Case No. D2018-1231
1. The Parties
Complainant is Yusuf A. Alghanim & Sons W.L.L. of Kuwait City, Kuwait, represented by Saba & Co. Intellectual Property s.a.l. (Offshore) Head Office, Lebanon.
Respondent is Anees Salah Salameh of Cambridge, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <wansa.com> is registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2018. On June 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on June 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2018.
On June 18, 2018, Respondent submitted an email offering to sell the disputed domain name to Complainant. Subsequently, the Center informed that Parties that if they wish to explore settlement options, Complainant should submit a request for suspension. On June 25, 2018, Complainant requested to suspend the proceeding. The Center notified the Parties that the proceeding was suspended until July 25, 2018. On June 27, 2018, Respondent submitted an informal email. On July 27, 2018, Complainant requested to reinstitute the proceeding. On the same day, the Center notified the Parties that the proceeding was reinstituted and the Response due date was July 30, 2018. Respondent did not submit any substantive response. Accordingly, on July 31, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 8, 2018. 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.
On August 20, 2018, the Respondent submitted a late Response.
4. Factual Background
Complainant is a large privately owned Kuwaiti company operating in 40 countries, with strongholds in the Middle East, India, and Turkey. Over the past 80 years, Complainant has partnered with companies such as GM, Cadillac, British Airways, etc. to introduce the companies' products to the Kuwaiti market. In addition, in 1999, Complainant launched its own "Wansa" brand of consumer electronics in Kuwait. Complainant owns over 30 WANSA trademark registrations in various countries, including Kuwait (e.g., Registration Nos. 12777 and 12779; November 24, 1980). Complainant promotes WANSA products online through its websites "www.wansaelectronics.com" and through "www.xcite.com," a site owned by Complainant's subsidiary Xcite General Trading Co. S.P.C. According to Alexa, the website "www.xcite.com" is the eighth most visited website in Kuwait.
Respondent is a Canada-based individual who registered the disputed domain name on November 6, 2003. Internet archive records indicate that the disputed domain name (at least starting in 2007) was for sale for a sum of USD 10,000. In mid to late 2015 the disputed domain name was set to redirect Internet traffic to the website "www.eureka.com.kw", which offers various consumer electronic products for sale. As of the filing of the Complaint, the disputed domain name redirected traffic to "www.eureka.com.kw".
5. Parties' Contentions
Complainant asserts that it has rights in the WANSA mark and that the disputed domain name <wansa.com> is identical to its mark. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known as "Wansa", has no business affiliation with Complainant, and has not been authorized to use the WANSA mark. Complainant argues that Respondent's use of the disputed domain name is not bona fide because Respondent uses the disputed domain name to redirect Internet users to "www.eureka.com.kw", a site offering goods that compete with Complainant's. According to Complainant, Respondent's bad faith registration and use of the disputed domain name is established by the fact that Respondent has taken advantage of WANSA, a famous mark in Kuwait and the Gulf region, to redirect users to a website belonging to Complainant's competitor.
Respondent emailed the Center to state that he has not used the disputed domain name "improperly or illegally" and that it remains on sale. Respondent did not submit a timely response, but did submit an untimely response before the Panel issued its decision. The Panel exercised its discretion to consider the untimely response.
The essence of the response is that "Wansa" is a personal name, well known in the Middle East. Respondent emphasizes that Complainant took no interest in the disputed domain name for many years and that "it wanted it for free."
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant's registered WANSA mark as it incorporates the mark in full.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case for Respondent's lack of rights or legitimate interests in the disputed domain name, which Respondent has failed to rebut. The evidence on record shows that Respondent has used the disputed domain name to redirect users to a competitor's website. This use of the disputed domain name is not a legitimate use and cannot support a claim to rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.5.3.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the record supports an inference of bad faith registration, which Respondent has failed to rebut. Specifically, Respondent explains that he registered the disputed domain because it is a personal name, but he does not deny the alleged awareness of Complainant or its trademark rights. And he does not offer any reason for his interest in "Wansa" as a personal name, other than an awareness of its association with Complainant. Respondent made no use of the disputed domain name for more than a decade, a fact which undermines any claim that Respondent had any purpose in registering the disputed domain name for any purpose other than exploiting its potential value to Complainant. Respondent subsequently used the disputed domain name to attract Internet traffic by creating a likelihood of confusion with Complainant's mark. This is sufficient to raise an inference of bad faith registration, which Respondent must rebut. See WIPO Overview 3.0, section 3.2.1:
"Application of UDRP paragraph 4(b)(iv): in some cases, e.g., where it is unclear why a domain name was initially registered and the domain name is subsequently used to attract Internet users by creating a likelihood of confusion with a complainant's mark, panels have found that UDRP paragraph 4(b)(iv), read in light of paragraph 4(a)(ii), can support an inference of bad faith registration for the respondent to rebut."
The Panel also finds that Respondent used the disputed domain name in bad faith. Respondent takes advantage of Complainant's mark to redirect Internet users to the website of Complainant's direct competitor in the region. Respondent's action supports a finding of bad faith use. See WIPO Overview 3.0, section 3.1.3. Respondent complains that Complainant ignored the disputed domain name for many years, but Complaint responded fairly promptly after Respondent began redirecting to a site offering competitive products.
Complainant has satisfied 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 name <wansa.com> be transferred to Complainant.
Lawrence K. Nodine
Date: August 22, 2018