WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dubizzle Limited v. Registration Private, Domains By Proxy, LLC / Dubizzle Pro, Dubizzlepro

Case No. D2021-1612

1. The Parties

The Complainant is Dubizzle Limited, British Virgin Islands, United Kingdom, represented by Khalid A. Altamimi Advocates & Legal Consultants, United Arab Emirates (“UAE”).

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Dubizzle Pro, Dubizzlepro, India.

2. The Domain Name and Registrar

The disputed domain name <dubizzlepro.com> 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 May 24, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2021, 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 May 28, 2021 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 June 17, 2021.

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 June 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on July 20, 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, Dubizzle Limited, is a company incorporated in 2005 under the laws of the British Virgin Island, United Kingdom. Since that year it operates the website “www.dubizzle.com” which provides a platform for users in the UAE to buy, sell, or find any product or services in their community from properties and cars available for sale or rent to employment opportunities.

The Complainant also operates an online marketplace under the domain name <dubizzle.com> for the sale and purchase of vehicles under the name Dubizzle Pro. By subscribing to this service, a seller of cars can request for an inspection report of a car to be issued by the professionals of the Complainant and can also engage an assistant to negotiate and sell the car on behalf of the seller.

The Complainant is the owner of several registrations for the trademark DUBIZZLE around the world, including the following:

1) Algerian Trademark Registration number 85640 for DUBIZZLE covering advertising and business services in class 35 registered on May 21, 2014;
2) Egyptian Trademark Registration number 290795 for DUBIZZLE covering advertising and business services in class 35 registered on October 28, 2014;
3) Egyptian Trademark Registration number 290796 for DUBIZZLE covering telecommunication services in class 38 registered on October 28, 2014;
4) Egyptian Trademark Registration number 290797 for DUBIZZLE covering technology and software services in class 42 registered on October 28, 2014;
5) European Union (“EU”) Trademark Registration number 18105011 for DUBIZZLE covering computer and scientific devices in class 9, advertising and business services in class 35, and technology and software services in class 42 registered on February 22, 2020;
6) Jordan Trademark Registration number 129995 for DUBIZZLE covering advertising and business services in class 35 registered on August 13, 2014;
7) Kuwait Trademark Registration number 119139 for DUBIZZLE covering advertising and business services in class 35 registered on November 20, 2014;
8) Qatar Trademark Registration number 89619 for DUBIZZLE covering advertising and business services in class 35 registered on August 2, 2016;
9) Saudi Arabian Trademark Registration number 143411019 for DUBIZZLE covering advertising and business services in class 35 registered on April 10, 2014;
10) Tunisian Trademark registration number 2013/1168 for DUBIZZLE covering advertising and business services in class 35 registered on April 1, 2014;
11) UAE Trademark Registration number 194179 for DUBIZZLE covering advertising and business services in class 35 registered on March 8, 2015;
12) UAE Trademark Registration number 194180 for DUBIZZLE covering telecommunication services in class 38 registered on March 8, 2015;
13) UAE Trademark Registration number 194181 for DUBIZZLE covering technology and software services in class 42 registered on March 8, 2015.

All the above trademarks have been registered about three to five years preceding the registration of the disputed domain name (except for the EU trademark, which was registered shortly after that of the disputed domain name). Copies of the registration certificates of the above marks are provided in Annex 4 to the Complaint.

The Complainant is the owner of the domain name <dubizzle.com> registered on July 13, 2005.

The disputed domain name was registered on February 17, 2020, and

resolves to a website posting news and stories in relation to car and bike races and featuring the name Dubizzlepro on its home page.

The Respondent is offering for sale the disputed domain name on the Registrar’s website for the price of USD 50,000.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar with the trade name and trademark DUBIZZLE in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith. The disputed domain name is also identical to the Dubizzle Pro name used by the Complainant in relation to the sale and purchase of vehicle services.

The disputed domain name is registered for the sole purpose of selling it for a profit in excess of the Respondent’s out-of- pocket costs directly related to the disputed domain name.

Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

As set forth in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The Panel considers that the disputed domain name is confusingly similar with the Complainant’s DUBIZZLE trademark.

The disputed domain name contains the Complainant’s trademark DUBIZZLE in its entirety with the term “pro” which does not avoid a determination of confusing similarity. Further, the Panel notes that it is widely known that “pro” is used to identify an upgraded version of products or services.

The “.com” generic Top-Level-Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the disputed domain name is confusingly similar with the DUBIZZLE trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a 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.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Panel notes that the Respondent’s name is “Dubizzle Pro, Dubizzlepro”. However, taking into consideration that: a) the Complainant operates a dedicated online marketplace under the name Dubizzle Pro for the sale and purchase of vehicles; b) the disputed domain name resolves to a website posting news and stories in relation to car and bike races; and c) the Complainant’s DUBIZZLE trademark was registered well before the registration of the disputed domain name, the Panel finds that it is most likely that the Respondent chose the name “Dubizzle Pro, Dubizzlepro” to illegitimately target the Complainant and its business.

Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has rights or legitimate interests in the disputed domain name.

Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name - which is confusingly similar with the Complainant’s trademark DUBIZZLE - but rather that it intends to use the disputed domain name for the purpose of deriving unfair advantage by confusing Internet users and leading them into believing that the site to which the disputed domain name resolves to is the official site of the Complainant given that the Complainant operates a dedicated online marketplace under the name Dubizzle Pro for the sale and purchase of vehicles.

As established in section 2.5 of the WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.”

As indicated in section 6.A above, the disputed domain name is confusingly similar with the Complainant’s trademark DUBIZZLE, and the Panel considers that the nature of the disputed domain name carries a risk of implied affiliation.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade name and trademark DUBIZZLE mentioned in section 4. above (Factual Background) and also the Complainant’s domain name <dubizzle.com> when it registered the disputed domain name on February 17, 2020. By that time, the Complainant had widely and intensely used the trademark DUBIZZLE.

By registering the disputed domain name, the Respondent was targeting the Complainant and its business by incorporating the Complainant’s trademark DUBIZZLE in its entirety plus the term “pro” with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trade name and trademark for its own benefit.

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name, the nature of the disputed domain name, the use of the disputed domain name for posting news and stories in relation to car and bike races (the Complainant operates a dedicated online marketplace under the name Dubizzle Pro for the sale and purchase of vehicles), and the Respondent’s offering for sale the disputed domain name for the price of USD 50,000 on the Registrar’s website are indicative of bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0). The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

For the above reasons, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled.

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 name <dubizzlepro.com> be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist
Date: August 3, 2021