WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fareed Khalaf Sons Company / Khalaf Stores v. WhoisGuard Protected, WhoisGuard, Inc. / Nour agha
Case No. D2020-3033
1. The Parties
The Complainant is Fareed Khalaf Sons Company / Khalaf Stores, Jordan, represented by Saba & Co. IP, Lebanon.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Nour agha, Turkey.
2. The Domain Name and Registrar
The disputed domain name <halibna-milk-powder.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 2020 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 December 16, 2020.
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 December 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2021. The Respondent did not submit any formal response. The Center received a communication from the Respondent by email on December 16, 2020. On January 12, 2021, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 12, 2021. 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 Complainant is a prominent company in the Jordanian food industry and the owner of an instant milk powder brand named HALIBNA. Founded in 1980, HALIBNA was established by the Jordanian Government’s Ministry of Supply.
The Complainant is the owner of trademark registrations in many jurisdictions worldwide, including, but not limited to:
- HALIBNA, Lebanese Trademark Registration No. 75147, registered on February 28, 1998, in International class 29;
- HALIBNA and DEVICE, Kuwaiti Trademark Registration No. 40465, registered on July 21, 1998, in International class 29;
- HALIBNA, Omani Trademark Registration No. 1017137, registered on December 20, 2004, in International class 29;
- HALIBNA, Polish Trademark Registration No. R.207129, registered on June 20, 2008, in International class 29;
- HALIBNA , Singapore Trademark Registration No. T9802928G, registered on December 3, 1997 in International class 29;
- HALIBNA, European Union Trade Mark Registration No. 002288710, registered on March 14, 2011, in International class 29; and
- HALIBNA, United Kingdom Trademark Registration No. UK00002392047, registered on November 25, 2005, in International class 29.
The aforementioned trademarks are hereinafter referred to collectively as the “HALIBNA Mark”. The Complainant hosts its official website for the HALIBNA Mark and associated milk products at “www.halibna.com”.
The Disputed Domain Name was registered on April 11, 2018 and resolves to a webpage that looks like the Complainant’s official website and contains photographs of the Complainant’s instant milk powder product bearing the Complainant’s HALIBNA Mark.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not submit any formal response. However, the Respondent sent an email communication to the Center on December 16, 2020, claiming that the Complaint was sent to the wrong person.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the HALIBNA Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the HALIBNA Mark based on its registered trademarks for the HALIBNA Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the HALIBNA Mark.
The Disputed Domain Name consists of the HALIBNA Mark followed by the dictionary terms “milk” and “powder”, connected by hyphens, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark would be considered confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s HALIBNA Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name. Finally, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Name to resolve to a website impersonating the Complainant’s official website, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. See SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792 (the close proximity between the goods and services offered by the Complainant and the Respondent indicates that the Respondent is taking advantage of the similarity between the Complainant’s mark and the domain name and is doing so for commercial gain).
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s HALIBNA Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving page. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its HALIBNA Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”).
Second, the Disputed Domain Name was registered years after the Complainant first began using its HALIBNA Mark. Therefore, the Panel finds it likely that the Respondent had the Complainant’s HALIBNA Mark in mind when registering the Disputed Domain Name, demonstrating bad faith.
Third, the Disputed Domain Name resolves to a webpage that impersonates the Complainant’s official website and contains photographs of the Complainant’s instant milk powder product bearing the Complainant’s HALIBNA Mark without Complainant’s consent.
Finally, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Thus, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s HALIBNA Mark.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <halibna-milk-powder.com> be transferred to the Complainant.
Lynda M. Braun
Date: February 26, 2021