WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD
Case No. D2021-3590
1. The Parties
The Complainant is Saudi Arabian Mining Company (Ma’aden), Saudi Arabia, represented by Clyde & Co., United Arab Emirates.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama, represented by ESQwire.com PC, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <maaden.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent requested an additional four days to file the Response pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on November 29, 2021. The Complainant submitted a supplemental filing on January 17, 2022. The Respondent submitted a supplemental filing on January 24, 2022.
The Center appointed Andrew D. S. Lothian, Hoda T. Barakat, and Jeffrey J. Neuman as panelists in this matter on January 24, 2022. The Panel finds that it was properly constituted. Each member of 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 Saudi Arabian Mining Company (Ma’aden), established by a Royal Decree in 1997 and incorporated in Saudi Arabia. The Complainant has a mandate to develop Saudi Arabia’s minerals sector and, since being floated on the Saudi Stock Exchange in 2008, has diversified from being a gold producing company into phosphate, aluminum, industrial minerals, and copper concentrate operations.
The Complainant claims unregistered trademark rights in the MA’ADEN trademark since its inception in 1997, noting that its primary domain name <maaden.com.sa> was registered on August 30, 1999 and that its website at “www.maaden.com.sa” has been active since January 2001, under reference to entries from the Internet Archive “Wayback Machine” showing 779 indexed pages between January 24, 2001 and December 13, 2021. The Complainant is also the owner of two figurative marks for the MA’ADEN logo, registered in various jurisdictions, which have the following appearance respectively:
For example, the Complainant is the owner of Australian Registered Trademark No. 1619072 for the first of these figurative marks, registered on April 24, 2014 in Classes 1, 5, 35, 37, and 40 and is the owner of Saudi Arabia Registered Trademark No. 1441030731 for the second of these figurative marks, registered on November 15, 2020 in Class 37.
The creation date of the disputed domain name is September 11, 2003. According to the Registrar’s verification, the disputed domain name was registered by the Respondent (or the Respondent acquired the registration of the disputed domain name) on July 16, 2018. The Respondent however asserts that it acquired the disputed domain name “on or around May 2011”.
According to the Complainant’s several screenshots, the website associated with the disputed domain name features advertising links for rock salt licks for animals, “Miner Companies”, two financial trading platforms, employment applications, creative graphic designs, construction contractors, and construction schedule software.
Between July 11, 2020 and January 11, 2021, in a process initiated by the Complainant’s agents, the Parties attempted to negotiate a purchase of the disputed domain name, via their respective agents, in a back-and-forth email process. The Parties could not however agree on a price. The Complainant’s identity was not disclosed to the Respondent during this process. The Complainant’s agent told the Respondent’s agent by emails of July 11, 2020, October 19, 2020, and November 16, 2020 that it wished to use the disputed domain name for a beauty website. On December 9, 2020, the Respondent’s agent stated that its asking price was USD 500,000, “Given the generic nature of the name and possible end users (i.e. businesses with similar domain names)”. This was unacceptable to the Complainant’s agent, which made a counter-offer on December 20, 2020 of USD 80,000. On December 21, 2020, the Respondent’s agent replied that the lowest acceptable figure for the disputed domain name was USD 475,000. On January 7, 2021, the Complainant’s agent countered with an offer in the sum of USD 100,000, which was met on January 11, 2021 by an offer from the Respondent’s agent of USD 400,000, at which point the correspondence appears to have ended.
Three certified translations obtained by the Respondent dated October 31, 2021, November 2, 2021 and November 3, 2021 respectively, indicate that the Arabic word “معادن ” may be transliterated as “maaden” [certified translations 1 and 2], or “ma’adin” or “maaden” [certified translation 3]. The Arabic word is translated as “metal or minerals” [certified translation 1], “minerals” [certified translation2], or “minerals”, “mineral resources”, “metals”, “mines” and “half-piaster coins” [certified translation 3].
5. Parties’ Contentions
In the Complaint, the Complainant contends as follows:
Identical or confusingly similar
The Complainant has established substantial goodwill and reputation in, and has become exclusively associated with the MA’ADEN mark worldwide. The Complainant has consistently and continuously used the MA’ADEN trademarks for more than two decades, including on its website at “www.maaden.com.sa”, on social media including “LinkedIn”, and “Twitter”, and on “YouTube”. The Complainant owns domain names incorporating the “MA’ADEN” designation, namely, <maaden.com.sa>, <maaden.sa>, <maaden.org>, <maaden.net>, <maaden.in>, and <maaden.co.za>. The Complainant has received awards and accolades for products and services provided under said mark, including in 2015, 2017, and 2018 [details provided]. The Complainant’s evolution timeline from 1997 to 2010 [details provided] demonstrates the Complainant’s growth and longevity of use of said mark.
The disputed domain name is identical to the Complainant’s MA’ADEN trademarks or at least is highly similar and would cause confusion.
Rights or legitimate interests
The Respondent has no rights or legitimate interests in the disputed domain name, which points to a website containing pay-per click (“PPC”) links to other businesses, including mining services of the Complainant’s competitors, having no connection to any entity sharing the MA’ADEN name. There is no indication that the Respondent is genuinely trading by reference to the disputed domain name. The Respondent is seeking to take unfair advantage of the reputation of the Complainant’s marks and misleadingly divert consumers to the Respondent’s website. The Complainant has found no evidence that the Respondent is commonly known by the disputed domain name or owns any trademarks consisting of “maaden”. A “Google” search result for the term “maaden” discloses results relating solely to the Complainant. The Respondent is not making a legitimate or noncommercial fair use of the disputed domain name.
It is inconceivable that the Respondent was not fully aware of the Complainant’s reputation when the disputed domain name was registered. The Complainant was incorporated in 1997 and has become well-known globally for its mining operations. The Respondent has no justification for selecting the disputed domain name.
Registered and used in bad faith
In June 2020, the Complainant noticed that the disputed domain name was posted for bidding on “www.sedo.com”. The Complainant placed a bid of USD 500 but did not receive a response. The Complainant communicated with the Registrar and domain administrator, and was informed by the latter that the disputed domain name was available for sale by “serious domain investors” and that it should make an offer. The Complainant then offered USD 1,500 for the disputed domain name and received a counter-offer from said administrator of USD 500,000. The Complainant then indicated that the best it could offer was USD 100,00 [sic, the Panel presumes this to mean USD 100,000] but the Respondent insisted on at least USD 475,000, which is a disproportionate price. Such price is in itself evidence of use and registration in bad faith and it greatly exceeds the Respondent’s out-of-pocket costs directly associated with the disputed domain name.
The Complainant was established 11 years prior to the Respondent’s registration of the disputed domain name in 2003 and its trademark is well-known. The Respondent would have had knowledge of the Complainant due to its extensive fame and reputation when it registered the disputed domain name and its excessive asking price intentionally targets the value in the Complainant’s reputation. The Respondent is a domain name investor, has no interest in the name “maaden” and the website at the disputed domain name redirects consumers to PPC links and competitor mining companies. Using a domain name which incorporates a trademark to offer the products or services of competitors of the mark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the mark owner.
There have been around 100 domain name disputes filed against the Respondent. The Respondent appears to be used by registrants in the habit of registering the domain names of third parties, possibly due to their strict privacy regime. Such adverse decisions suggest a pattern of behavior which amounts to bad faith.
In the Response, the Respondent contends as follows:
The owner of the disputed domain name is Jason Levine. By declaration, Mr. Levine states that he purchased the disputed domain name in about May 2011 to expand his portfolio because it is a valuable, brandable, “.com” domain name that is a single Arabic dictionary word translating to “metals” or “minerals”. In responding to the Complaint, the Respondent has obtained three certified translations which attest to said translation of the word. Mr. Levine states that the value of the disputed domain name was enhanced by the fact that it was “an aged domain name”, first registered on or before 2003.
The Respondent has been registering such common word domain names since at least 2003 because they serve well as online identities and are commercially valuable. The Respondent develops the domain names or resells them to other entities and hosts underdeveloped domain names with domain name parking services, an industry-wide accepted practice.
The Complainant has registered, purchased, and sold at least twelve other short and memorable single or two word dictionary domain names, namely <college.com>, <smoking.com>, <pills.com>, <med.com>, <asbestos.com>,<badcredit.com>, <prescriptiondrugs.com>, <cablebox.com>,<fivecardpoker.com>, <gameusedsticks.com>, <checkadvance.com>, and <cablebox.com> [the Panel notes that <cablebox.com> has been duplicated in the Respondent’s list]. The Respondent did not register the disputed domain name with the Complainant’s trademark in mind. The Respondent did not intend to target the Complainant. The Respondent engaged in good faith negotiations with the Complainant, who remained anonymous, to consummate a sale.
The fact that “ma’aden” is a generic Arabic word with the above translation was known to the Complainant. There is support for the Respondent’s belief that the disputed domain name has inherent value as a generic Arabic word “.com” domain name.
Identical or confusingly similar
The Complainant has not produced evidence that it holds a registered trademark for the word MA’ADEN alone. The Complainant produces many registrations that appear to be the same design and logo mark that appears on the Complainant’s website. The Complainant’s design mark incorporates many words and languages. In Arabic-speaking nations, the enforceability of the Complainant’s mark may be restricted. The Complainant’s United States Registered Trademark No. 5691938 acknowledges that the English translation of “ma’aden” in the mark is “lode, bonanza, minerals, essence, or intrinsic nature” and the Complainant itself acknowledges the generic nature of the Arabic word. It is reasonable to expect that the Complainant would not claim exclusive rights to a single dictionary word that the Complainant uses in a descriptive sense relating to mining and metals. The Panel should find that the Complainant’s design mark does not provide it with rights to one of the generic/descriptive terms therein, particularly where used in a descriptive sense. A generic word will be given little if any protection under the UDRP whether or not it is sought to use it as an unregistered trademark. Generic marks are entirely incapable of acquiring secondary meaning and cannot provide unregistered trademark rights under the Policy. At best, the mark would be deemed descriptive, and the Complainant would not be able to prove secondary meaning.
Rights and legitimate interests
The registration of domain names that contain common words are permissible on a first-come, first-served basis. Such registration establishes the Respondent’s legitimate interest, provided the disputed domain name was not registered with a trademark in mind. Registering such words for re-selling is itself a legitimate business activity, provided there is no intent to target the trademark holder. If there is doubt that the Respondent registered the disputed domain name solely based on its descriptive character and not because of the Complainant’s trademark, it should consider the Respondent’s many non-trademark domain names registered since 2003. The only reasonable inference to be drawn is that the Respondent does not target trademarks. This is a good faith purchase from the previous owner as a valuable single word Arabic “.com” domain name.
Evidence of rights or legitimate interests in a domain name can be determined under paragraph 4(c)(i) of the Policy by a finding that the Respondent is a generic domain name reseller with numerous similar domain names held for investment. A business investing in domain names satisfies the legitimate interest prong of the Policy, provided there is no evidence that a trademark was targeted by the registrant. The Panel should find that the Respondent’s cultural understanding of the meaning of the disputed domain name, his position as an entrepreneur and domain name investor and the totality of the evidence indicates that the Respondent has rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
Registered and used in bad faith
There is no evidence of bad faith registration or use. The Respondent purchased the disputed domain name because it is a single, generic Arabic word “.com” that became available when its prior owner decided to sell it. This is not a case of cybersquatting. Registration in this manner fails to support a finding of bad faith, and negates it. In an analogous context, previous panels have held that expiration of a domain name raises the presumption that any trademark rights in such name have been abandoned. Absent specific proof of intent to profit from the Complainant’s mark, bad faith cannot be established. The presumption of good faith here is even stronger, where the prior owner has used the disputed domain name in a non-infringing manner and offered it for sale, signaling that there is no competing third party trademark claim. The Respondent purchased the disputed domain name based on its descriptive or common meaning and the fact that there was no indication of alleged infringement since 2003 indicates strongly that it was purchased in good faith.
Bad faith cannot be proved absent evidence of knowledge of the Complainant’s mark on the Respondent’s part. The Panel should conclude that the Respondent did not have such knowledge and that it did not target the Complainant with the registration of the disputed domain name.
A response to an unsolicited offer to purchase the disputed domain name is not bad faith. The Respondent was contacted by an independent party on the Complainant’s behalf and the Respondent was not aware that the Complainant was seeking to purchase the disputed domain name. After the third round of offers and counter-offers, the Complainant’s representative ceased responding. The Respondent engaged in good faith negotiations with an anonymous party that described itself as an entrepreneur. It is not bad faith to offer generic or descriptive terms for sale. This is not a case of cybersquatting but of the Respondent purchasing a domain name because it was an attractive option. It could be found that the Complainant’s unsolicited offer to purchase the disputed domain name is itself an acknowledgement of the Respondent’s legitimate interest in the disputed domain name. Responding to such offers with counter-offers is not bad faith.
Public and private history of domain name valuations supports the fact that the Respondent was justified in its counter-offer. A recent panel found that even a USD 1,000,000 asking price is not bad faith. It is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name.
Reverse Domain Name Hijacking
The facts fit squarely into the “Plan B” type of case, namely using the Policy after failing to acquire the disputed domain name. This has been described as a “highly improper purpose” in past cases. The Complainant not only attempted to purchase the disputed domain name but engaged in three rounds of offers and counter-offers but chose not to respond to the last counter-offer and instead to file the Complaint. The Panel should find that the Complainant abused the administrative proceeding.
C. Complainant’s supplemental filing
In the Complainant’s supplemental filing, the Complainant contends as follows:
Identical or confusingly similar
The Complainant has enforceable rights in the mark MA’ADEN on its own, as well as part of the Complainant’s logo. The dominant and distinctive part of the Complainant’s mark is the word “MA’ADEN”. Since domain names cannot contain apostrophes, the disputed domain name should be considered identical to this word. The Complainant reiterates that it has unregistered rights in said word through use since 1997 and through Article 8 of the Paris Convention (protection of trade names). Through longstanding use, MA’ADEN qualifies as a well-known trademark pursuant to Article 6 of the Paris Convention.
The Complainant’s mark is not descriptive. It is at most allusive to the services offered by the Complainant and only then to Arabic speaking consumers. The word in isolation does not give the Arabic-speaking consumer sufficient information to determine the precise nature or characteristics of the services offered. This is supported by the decision of the Saudi Authority for Intellectual Property to accept the Complainant’s applications for registration of its mark. No disclaimers apply to the Complainant’s registrations. The Complainant has also secured registration in non-Arabic speaking countries where the word would be seen as entirely invented with no ascribed meaning.
Rights and legitimate interests
With regard to the Respondent’s list of domain names allegedly registered over the years, all such examples are generic or dictionary words (or abbreviations or combinations of dictionary words) in the English language. There are no transliterations of generic or dictionary words in Arabic or any other language. There is no evidence that the Respondent has any knowledge or understanding of the Arabic language. The Respondent has shown no evidence of a pattern of behavior which includes the registration of domain names consisting of translations or transliterations of Arabic words. Even if the Respondent had any basic knowledge of Arabic, the word “معادن ” is a technical word used to describe metals or minerals. Without any in-depth knowledge of Arabic, the Respondent is unlikely to have known that “maaden” is one of several possible transliterations of the Arabic word for metals or minerals. To the average English-speaking consumer, it would be seen as an invented word with no obvious descriptive meaning.
On the basis that the Respondent is not an Arabic speaker, nor has any knowledge of the Arabic language, he has not demonstrated a legitimate interest in the disputed domain name. If the Respondent was familiar with the meaning of the Arabic word it is not using the disputed domain name for a website concerning metals or minerals. It is displaying PPC advertisements for construction companies which compete with the Complainant. The Respondent has made no effort to show that it is using or has made preparations to use the disputed domain name in connection with a website relating to metals or minerals and it must be concluded that the Respondent has no rights or legitimate interests in the disputed domain name.
Registration and use in bad faith
The Respondent claims that at the point of acquisition of the disputed domain name in 2011, it was unaware of the Complainant or its business. It is submitted that “maaden” is an uncommon word and that, while the Respondent was not expected to carry out full trademark searches prior to its acquisition of the disputed domain name, as a seemingly experienced and sophisticated businessman in the domain name sector, the Respondent should at least have carried out searches using online search engines to highlight whether the disputed domain name violated prior trademark rights. By 2011, the Complainant’s website had been active for over 10 years (registered August 30, 1999). The Internet Archive “Wayback Machine” demonstrates the longstanding online presence of the Complainant’s business with 779 entries between January 24, 2001 and December 13, 2021. The first hit at the present date on a Google search for “maaden” is the Complainant’s website and company details. The first three pages of such search exclusively refer to the Complainant and the commonly asked questions section refers to the Complainant also. The Respondent was not entitled to close its eyes to whether the disputed domain name was identical or confusingly similar to third party trademark rights. The Respondent made no good faith efforts to avoid registering and using a domain name that is identical or confusingly similar to marks held by others. The Respondent proceeded in full knowledge that the disputed domain name would cause confusion among consumers. The Respondent saw the sale of the disputed domain name as an opportunity to later sell it to the Complainant at some point in the future for large sums of money, as evidenced by the Respondent’s attempt to sell it for USD 500,000, a price tag clearly directed at a company the size of the Complainant.
Over the years, the PPC links on the landing page for the disputed domain name have directed consumers to competitors of the Complainant, including several other mining and construction companies. The Respondent has profited from diversion of Internet users attracted by the likelihood of confusion with the Complainant’s mark and the Complainant’s website “www.maaden.com.sa”. The Respondent is ultimately responsible for the content of its website regardless of how that content is generated. The reason the PPC links point to construction companies is because the Complainant’s mark is synonymous with and prevalent in this sector. If the Respondent was aware of the Complainant’s mark at the time of acquisition, it must also have known that the PPC links would point to the Complainant’s competitors. The Respondent should have ensured that the links pointed towards “metals” or “minerals”, or a blank homepage or otherwise addressed the content of the PPC links, and its failure to do so implies that it understood that the disputed domain name was causing confusion among consumers.
Reverse Domain Name Hijacking
The Complainant entirely denies that its efforts to acquire the disputed domain name amount to reverse domain name hijacking. The Complainant believes that it has satisfied the requirements under the Policy and as such, there has not been an abuse of the system.
D. Respondent’s supplemental filing
In the Respondent’s supplemental filing, the Respondent contends as follows:
The Complainant’s supplemental filing admits that the disputed domain name is an Arabic word as established in the Response, albeit that the Complainant asserts it is a “technical word”. This is belied by the fact that it is readily available for translation and is clearly defined as meaning “metal” or “mineral”. Words in the Arabic language have various levels of complexity but that does not change the fact that the word is indisputably a dictionary word.
The Complainant’s claim is relegated to a wholly unacceptable argument that because Respondent appears to register other English dictionary words, it should not have registered an Arabic dictionary word. This is untenable. Regardless of choice of language, the UDRP principles remain the same. Registration of a generic or dictionary word domain name for investment or development is a legitimate interest and the Complainant seems to admit this.
The Respondent has put forward ample evidence of its good faith purchase of the disputed domain name from its prior owner, who owned the disputed domain name since at least 2003, and the legitimate interest in the disputed domain name as an investment in a generic dictionary word domain name. The Complainant has provided no answer as to why it took no action against the prior owner or waited over 10 years to pursue the current owner. Despite the long delay, the Complainant presents no evidence of targeting by the Respondent. This remains a case of “Plan B” Reverse Domain Name Hijacking filed when the Complainant was trying to purchase the disputed domain name and engaged in three rounds of good faith negotiations. The bald statements of the Complainant should be rejected and the Complaint denied.
6. Discussion and Findings
To succeed in its Complaint, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. Preliminary Issue – Respondent’s Identity
Paragraph 1 of the Rules defines the respondent as “the holder of a domain-name registration against which a complaint is initiated”. In the present case, the holder of the disputed domain name as disclosed by the Registrar is “Fundacion Privacy Services LTD” of Panama City, Panama. This is the same holder that was previously disclosed on the public WhoIs record. In other words, rather than disclosing the details of an underlying registrant, the privacy service has been disclosed again, sometimes called a “Russian doll” scenario, where the name of the true registrant is still further embedded in a veil of secrecy (see Matvil Corporation v. Private Registration / PrivacyProtect.org, WIPO Case No. D2011-0841). The Complainant has produced the “Whois Privacy Service Agreement” prepared by the said registrant. This states that the privacy service will substitute itself as the holder of the disputed domain name, though it insists that the underlying registrant provide it with full and current contact details and reserves the right to substitute these on the WhoIs record at its discretion. In the present case, it evidently has not done so, and it remains the holder of the disputed domain name.
A person claiming to be the underlying holder of the disputed domain name has come forward and, with the assistance of legal counsel, has filed a Response accompanied by a formal declaration. According to the declaration, this person is named “Jason Levine”. No other details are provided regarding this person’s identity and, beyond the declaration, no evidence has been supplied of their connection to the disputed domain name. Out of deference to the Respondent’s counsel, who is instructed by the person concerned, and has put forward the Response and accompanying declaration on their behalf, the Panel has unanimously resolved to treat the said named person as the underlying beneficial registrant of the disputed domain name rather than treating the disclosed privacy service as the holder. References to the Respondent in the remainder of this decision are intended to indicate the author of the said declaration. The privacy service will continue to be named in the instance of this Decision, so as to allow the Registrar to implement any remedy that may be ordered by the Panel.
The majority of the Panel has concerns regarding the scant detail relating to the Respondent’s identity, restricted as it is to a name and surname, and to the use of the privacy service underlying the privacy service previously listed on the public WhoIs record. In light of the scant detail provided, it is not known, for example, in what country the Respondent is based, yet that fact could, in appropriate cases, make a material difference to the Panel’s findings. This lack of detail will be discussed further in the majority’s analysis under the second and third elements of the Policy.
B. Preliminary Issue – Parties’ Supplemental Filings
Paragraph 12 of the Rules provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Supplemental filings are generally discouraged unless specifically requested by the panel. Panels have repeatedly affirmed that the party submitting or requesting to submit a supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
In the present case, the Panel has unanimously resolved to admit the Parties’ unsolicited supplemental filings. The Complainant could not reasonably have anticipated the nature of the Response when it filed the Complaint. The Panel considers that it was reasonable for the Complainant to answer the points made, notably the Respondent’s request for a finding of Reverse Domain Name Hijacking. By the same token, mindful of its duties under paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Panel unanimously considered it reasonable to admit the Respondent’s supplemental filing, which sought to answer points raised in the Complainant’s supplemental filing.
C. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate both that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark. The comparison process between the trademark (or any dominant portion thereof) and the disputed domain name is usually conducted in a straightforward side-by-side analysis, typically excluding the generic Top-Level Domain (“gTLD”) as required for technical reasons only.
The Panel unanimously finds that the Complainant has UDRP-relevant rights in its figurative registered trademarks as described in the factual background section above. The marks consist of words in Arabic and English, together with a diamond-type device. As design elements cannot be reproduced in a domain name, these are typically disregarded for the purpose of assessing identity or confusing similarity under the Policy. However, where the design elements comprise the dominant portion of the relevant mark, such that they effectively overtake the textual elements in prominence, the trademark registration may be held to be insufficient by itself to support standing under the Policy (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Panel is satisfied that the word element is capable of being separated from the design element, leaving textual elements of “MA’ADEN Saudi Arabian Mining Company” (and its equivalent in Arabic) in the case of the first figurative mark, and “MA’ADEN” (and its equivalent in Arabic) in the case of the second figurative mark. In the second of these, the only element is MA’ADEN, while in the first, the Panel determines that MA’ADEN remains the dominant element.
Comparing the dominant portion of the Complainant’s mark (or, in the case of the second figurative mark, the only element) and disregarding in each case the Arabic translation as a mere repetition of the transliterated Latin script equivalent, the Panel finds identity between said portion or element and the disputed domain name. Although the Respondent argues that the enforceability of the Complainant’s mark may be restricted in Arabic-speaking nations, it offers no supportive evidence of this, nor in any event does the first element test under the Policy consist of an assessment of enforceability in any given territory. It suffices for the Complainant to put forward a mark that is ex facie validly registered, and the Complainant has done so. The Respondent also argues that the Complainant is essentially using a word in its mark that is wholly descriptive of its goods and services. The Panel does not consider that the word “ma’aden” is so descriptive. For example, the word “metals” or “minerals”, even where rendered in English, are at best allusive to and not wholly descriptive of the mining services and others which the Complainant provides, even though they might be said to be the end-product of a mining service, depending upon what is being mined. The Panel also accepts the Complainant’s rejoinder that the mark has been registered successfully in the various trademark registries listed in the Complainant’s Annexes without disclaimers being applied in respect of the word concerned.
Although not itself determinative of the issue on the first element analysis, the majority of the Panel also considers that the Complainant has established unregistered trademark rights as they are understood in terms of the Policy in the MA’ADEN mark. The evidence establishes that the Complainant has been known by that term since 1997, and there has been no substantive challenge to the Complainant’s submissions as to the sizeable scope of its operations, its various awards, and the fact that it has been listed on the Saudi Stock Exchange since 2008. The Google search relating to the term “maaden” produced by the Complainant suggests that the term is exclusively referable to the Complainant’s business, and the search return contains pages indicating that the Complainant is the largest mining company in Saudi Arabia, having 7,000 employees, assets of SAR 97,657,597,000.00 and revenues of SAR 12,080,000,000. Insofar as the word “معادن ” in Arabic has a dictionary meaning relating to certain items that may be mined, it is important to note that the unregistered mark contended for may be viewed as one of at least two possible transliterations of the Arabic word (referencing the Respondent’s certified translations). This confers upon it a distinctive character which is independent of the original word from which it may be derived. Notably, the transliteration would not be perceived as having any descriptive quality in any non-Arabic speaking country (and, likewise, not in an Arabic speaking country among those unfamiliar with transliterations into Latin script). It is entirely reasonable in the minds of the majority of the Panel that the Complainant’s extensive activities under the name concerned, over some 25 years, are more than sufficient to find that the term has acquired a secondary meaning denoting the Complainant’s goods and services along the lines discussed in section 1.3 of the WIPO Overview 3.0.
In all of these circumstances, the Panel finds unanimously that the disputed domain name is confusingly similar to the Complainant’s trademark and, accordingly, that the Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the majority of the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the website associated with the disputed domain name is displaying PPC advertising pointing to the Complainant’s competitors, that there is no indication the Respondent genuinely trades under the disputed domain name, that there is no evidence that the Respondent is commonly known by the disputed domain name or owns corresponding trademarks and that the use of the disputed domain name is not noncommercial or fair use.
The Complainant having established the requisite prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain name. The essence of the Response is that the Respondent is an investor in dictionary word domain names, that the disputed domain name is one such name, and that the Respondent acquired it as an investment in 2011 by virtue of this quality. The Respondent contends that the registration of domain names containing common words is permissible on a first-come-first-served basis and that this establishes the Respondent’s legitimate interest, provided that the disputed domain name was not registered with a trademark in mind.
The majority of the Panel adopt the consensus view on this topic set out in sections 2.9 and 2.10 of the WIPO Overview 3.0. In brief, section 2.9 states that the use of a domain name in connection with PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark. The section goes on to note that where the domain name consists of an actual dictionary word and is used to host PPC links genuinely related to the dictionary meaning of the word, and not to trade off the Complainant’s trademark, this would be permissible and consistent with respondent rights or legitimate interests under the Policy.
In this case, the disputed domain name does not consist of a dictionary word. It may “become” a dictionary word only if it is transliterated into the Arabic language, into “معادن ”, when it would have the meanings noted in the factual background section above. Even putting aside the added step requiring the transliteration of the Second-Level Domain of the disputed domain name into Arabic in order to resolve it to a dictionary word, the majority of the Panel has asked itself whether the PPC links identified in the evidence are genuinely related to the dictionary meaning of “معادن ” and finds that most of these do not. At best, for the Respondent’s argument, “Miner companies” might relate to the dictionary meaning of “mine”. However, several other links have been displayed and these do not match the dictionary meaning.
One can only get to the dictionary meaning in this case with a knowledge of Arabic and a re-rendering of the disputed domain name into Arabic script. This seems a step too far for the majority to find that the disputed domain name consists of an actual dictionary word used for PPC links genuinely related to its meaning. Section 2.10 of the WIPO Overview 3.0 amplifies this conclusion, going on to note that merely registering a “dictionary word” domain name does not by itself confer rights or legitimate interests on a respondent and that to be able to make such a finding, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
A consideration of whether there is evidence that the disputed domain name was intended to trade off third-party trademark rights is best left to the third element under the Policy, given that the second and third elements tend to overlap in this area. It suffices to say for present purposes that there does not appear to be any consistent evidence of the use of the disputed domain name for its alleged dictionary meaning, while there is evidence pointing in the other direction, notably the PPC links related to construction companies.
In all of these circumstances, the majority of the Panel finds that the Complainant has carried its burden in connection with paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.
It is widely accepted among UDRP panels that for bad faith registration and use to be made out there must be a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain name (see e.g., The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). The main consideration for the Panel in the present case is whether the disputed domain name was registered for its alleged value as a dictionary word and has been used as such, or whether there are indicia of bad faith suggesting that it may have been registered or acquired for trademark abusive purposes and to target the Complainant.
The first question for the Panel is the relevant date for the assessment of registration in bad faith. The Respondent indicates that it acquired the disputed domain name from its original registrant in May 2011. Absolutely no evidence of any character has been submitted in support of this submission other than the Respondent’s declaration. This seems more than a little suspicious to the majority of the Panel, given that the actual date would be uniquely in the Respondent’s knowledge and that there must be ample independent evidence of the circumstances in which the disputed domain name was allegedly acquired from the original registrant. The Respondent must be aware of the importance of the date of its acquisition to the Panel’s deliberations, yet the Respondent provides the Panel with absolutely no supporting evidence.
Even if the Panel accepts that the Respondent acquired the disputed domain name in 2011 from the original 2003 registrant, there could be no suggestion that good faith (if any) attributed to any 2003 registrant could immunize the Respondent from scrutiny under the Policy (see, for example, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062). The Respondent nevertheless suggests that there is a presumption of good faith registration where the prior owner has used the domain name in a non-infringing manner. The Respondent claims to have put forward “ample evidence” of good faith purchase of the disputed domain name from its prior owner. Yet the Respondent provides no evidence as to who the prior registrant was, whether they were the original 2003 owner, and how they used the disputed domain name in a non-infringing manner. The Respondent merely indicates that there is some significance in the fact that, by the time the Respondent allegedly acquired it, the domain name was “an aged domain name”, thus enhancing its value.
This causes the Panel to turn to the Respondent’s motivations in acquiring the disputed domain name. The Respondent merely states that the disputed domain name is a dictionary word, an attractive item in which to invest. As has already been outlined, the matter is not quite so simple. Transliterating the word “معادن ” from Arabic with one particular transliteration will give rise to the Second-Level Domain of the disputed domain name. Yet the Panel does not know and is not able to assess whether that is how the Respondent truly saw the disputed domain name. For that to be the case, it must either know Arabic, and/or have access to a resource containing the necessary transliteration. Yet the Panel is told nothing of the background apart from the fact itself, and notably is presented with three certified translations, which were only prepared in connection with this administrative proceeding.
The question of the Respondent’s background and ability to transliterate into Arabic is important in this case because it goes directly to the question of the Respondent’s true intent in acquiring the disputed domain name. Of this, the Respondent tells the Panel nothing, beyond denying that it acquired the disputed domain name in the knowledge of the Complainant. The majority of the Panel concludes that this omission is intentional and deliberate. Regardless of how or when it acquired it, when the Respondent first encountered the disputed domain name, the Second-Level Domain was rendered in ASCII as “maaden”. It was not represented as any dictionary word, in Arabic or otherwise. How did it mean to the Respondent what it now alleges? Only through a knowledge of Arabic, which the Complainant suggests would need to be fairly technical, or perhaps through an explanation by a third party with such knowledge, could the Respondent have understood the disputed domain name’s alleged significance. The Respondent appears to accept that the issue is significant, referring in the Response to its “cultural understanding” of the meaning the disputed domain name without being prepared to tell the Panel what this was, and what the phrase “cultural understanding” means. The majority of the Panel has asked itself why the Respondent does not elaborate, particularly when the knowledge issue is placed squarely into focus by the Complainant’s supplemental filing. The Panel does not know, and the only reasonable conclusion for the majority of the Panel to reach from the Respondent’s failure to explain how it allegedly came to know what the disputed domain name represents in transliterated, dictionary word, terms is that the Respondent is hiding something, and has adopted the approach of “the less said, the better”. In a written submissions procedure, that is an unwise position for a respondent to take as it suggests a lack of candor to the majority of the Panel which is capable of being regarded as an indicium of bad faith.
Where the Respondent fails to address the point, the Panel is bound to appreciate that, on the one hand, the Respondent could be (hypothetically) a native Arabic speaker. It could be familiar with words in both the original script and all the possible transliterations. It may have acquired the disputed domain name in that knowledge alone, suggesting that no targeting of the Complainant’s rights may have taken place. On the other hand, the Respondent may simply be a cybersquatter who set out to register the disputed domain name in the full knowledge of the Complainant’s rights, needing no understanding of either translation or transliteration matters. The latter could be put forward as a strategy of the Respondent to “reverse engineer” the reason for acquisition. This is what is suggested to the majority of the Panel by the Respondent’s evident lack of candor.
In any event, one of the Respondent’s particular challenges in putting forward the case which it does is that any Internet searches which it might have performed, even if only to understand what “maaden” could mean, are likely, on the basis of the evidence before the Panel of the Complainant’s strong online presence dating from at least 2001, to have brought forth an exclusive reference to the Complainant’s name and not to any dictionary word. Even if the Respondent did have any special knowledge of Arabic, or has been present in a country in the Middle East, for example, that could also suggest that not only did it know the dictionary word “معادن ” but also had been aware of the Complainant’s name and corporate activities. In other words, it would not exclude the possibility that targeting has taken place.
The majority of the Panel has asked itself whether there is anything in the Respondent’s declaration that provides independent support for the alleged bona fide acquisition of the disputed domain name, on an imprecise and unevidenced date, and finds that there is not. For example, the Respondent says that it is a domain name investor in dictionary word domain names with intrinsic value and that the disputed domain name was acquired as part of its business, albeit that the evidence which it puts forward in support of this assertion is merely a list of domain names. In any event, the 11 other alleged dictionary word domain names that the Respondent is said to have registered (noting that one on the list is duplicated both in the declaration and the Response) are all words or phrases in the English language. They are not even words in other foreign languages, far less in Arabic, and far less transliterated. The other domain names form a pattern, with which the disputed domain name notably does not fit. Obviously, the disputed domain name could be an “outlier” in the Respondent’s collection but that does not change the fact that the list of other domain names does not support the Respondent’s position vis à vis the disputed domain name, which is of a wholly different character. This makes the Respondent’s failure to be entirely candid as to the background altogether more suspicious. In addition, the Respondent fails to provide any evidence that Arabic dictionary words transliterated into Latin script have any intrinsic value. They may do, and the Respondent may imply this in its submissions, but it does not evidence that fact.
There is a further problem with the Respondent’s case which arises from the fact that the disclosed holder of the disputed domain name is a privacy service. In appropriate cases, the “Russian doll” scenario may also be an indicium of bad faith as it suggests an intent to avoid the thrust of the Policy or indeed any other enforcement action regarding the disputed domain name (see section 3.6 of the WIPO Overview 3.0, and notably the comment “[…] Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith.”). In the present case, while as noted earlier an alleged beneficial holder has come forward, the Panel has nothing before it to connect this person to the disputed domain name other than the fact that it has filed a Response. As noted above, the Panel is given only a first name and surname and nothing more.
This is not a case of a privacy shield being lifted by the Registrar for the purposes of the administrative proceeding, revealing the registrant’s name and contact details as in the typical case. In its declaration, the Respondent merely asserts on this topic that it maintains its domain names under registrar-provided privacy services “in order to protect and preserve my identity”. The situation in the present case seems to the majority of the Panel to go beyond the normal, legitimate use of a privacy service. Even if the “Russian doll” arrangement is the standard practice of the privacy service concerned, as suggested by its contractual terms, there is particular cause for concern when the true registrant is never properly revealed. The Complainant alludes to this in its submissions where it talks about a large volume of previous findings of bad faith which have been made against such revealed registrant under the Policy. A previous panel under the Policy has gone further, noting as recently as last year that this particular privacy service “has adopted a business model of providing […] privacy services either to a single or multiple cybersquatters. If that is so, the use of this particular service arguably now carries with it a presumption of bad faith registration and use” (see: Discover Financial Services v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-1514).
In particular, with only a name to go on, it is impossible for the Complainant to seek to verify or fully challenge any of the Respondent’s claims. It is difficult for the Panel to assess the Respondent’s case on some aspects. Was the Respondent the registrant of the 11 domain names? Where is the Respondent based and in what jurisdiction? Neither the Complainant nor the Panel know and yet the Respondent expects the Panel to rely on a bare and unsupported declaration for a variety of material facts, not least of which is the acquisition date of the disputed domain name. The privacy service use in this particular case may not be conclusive of bad faith intent on its own, albeit that the panel in Discover Financial Services, supra suggested its use may carry a presumption of bad faith registration and use, but it does form part of the picture before the Panel of a Respondent which uses a service that is popular with cybersquatters, who is not telling the whole story, and is potentially seeking to avoid the consequences of being called to account.
The Respondent’s case suggests that the Complainant’s MA’ADEN mark may not be sufficiently distinctive as it corresponds to a dictionary word. As section 3.2.2 of the WIPO Overview 3.0 notes, if a respondent can credibly show that the complainant’s mark has a limited reputation and is not known or accessible in the respondent’s location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant’s mark. Here, the Respondent keeps its location concealed and so could not rely on that proposition. As the section goes on to note, given the Internet’s borderless nature, a sweeping respondent disclaimer of knowledge can be seen by panels as lacking in credibility, noting that the business of cybersquatting often seeks to exploit the global reach of the Internet. The majority of the Panel finds that had the Respondent looked anywhere online, it would have identified the Complainant, most probably long before it found any transliteration or translated dictionary word meanings. This leads the majority to doubt the Respondent’s assertion in its declaration of a lack of any knowledge of the Complainant when it acquired the disputed domain name. Furthermore, paragraph 2 of the Policy calls for a good faith effort on the part of registrants to avoid the registration and use of domain names corresponding to trademarks in violation of the Policy. A respondent, particularly an allegedly sophisticated buyer and seller of domain names such as the Respondent, cannot close its eyes to whether it is acquiring a domain name that is identical or confusingly similar to another’s trademark (see HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, and Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304).
In short, the majority of the Panel considers that the totality of circumstances of this case call for an answer from the Respondent which is lacking here. While the Complainant’s registered trademarks post-date the date on which the Respondent allegedly acquired the disputed domain name, there is no evidence of a 2011 acquisition date before the Panel or indeed any adequate evidence of any particular acquisition date by the Respondent. It would merely be conjecture, for example, to base the likely date of acquisition upon the movement of the disputed domain name between registrars, particularly when the best evidence is in the Respondent’s hands and is not forthcoming. In any event, even if one takes the year 2011 as accurate, by then, the Complainant had evidently been trading as MA’ADEN for some 14 years. It had been a listed company for three years. Its web presence at “www.maaden.com.sa” had been active for over a decade, and as the Complainant notes, its longstanding online presence is demonstrated by the extent to which it has been archived on the Internet Archive “Wayback” Machine. It is inconceivable that a putative registrant of the disputed domain name would not have encountered the Complainant’s existence had it performed any online search whatsoever, even if only to understand what “maaden” could mean.
Ultimately, when the Complainant’s agent approached the Respondent’s agent to discuss a possible purchase of the disputed domain name, the Respondent fixed a price that is suspiciously high. There are numerous examples of previous cases under the Policy where a registrant demanded a high price for a dictionary word domain name and their alleged investment was ultimately found by the panel to have been in good faith, such that the registrant could set whatever price was appropriate. Those are cases where there is no suggestion that the mark owner might have been targeted. This case has significant differences. In the first place, it is necessary to “jump through hoops” in order to describe the disputed domain name as a dictionary word. It is at best one of at least two possible transliterations into an alternative script of a word that is a dictionary word if rendered in the original script of the language concerned. Secondly, where it has not been so transliterated, it happens to be the name and mark of a significant, well-documented company with a strong online presence, which has been so-named since 1997. That being the case, the majority of the Panel is persuaded that when the Respondent named its price, the value which it set in this particular case is suggestive of the fact that its original intent, whenever it acquired the disputed domain name, was ultimately to hold the Complainant to ransom in an example of prototypical cybersquatting. The Respondent’s price was not one concerning the value of a transliterated dictionary word but rather one which it expected the Complainant to be able to pay. Although the Complainant concealed its identity by the use of an agent in the purchase negotiations, on any reasonable interpretation of the facts of the case, the Respondent knew exactly with whom it was dealing. There is no evidence, for example, that a search for “maaden” online would disclose any other party, and likely acquirer, than the Complainant. The majority of the Panel’s concerns regarding the Respondent’s case to answer, as outlined above, reinforce this impression.
Beyond that assessment, which strongly points in the direction of registration and use in bad faith, there is a further case in terms of paragraph 4(b)(iv) of the Policy regarding the Respondent’s use of PPC parking which, at least in part, targeted the Complainant. Whether or not these links were automated or keyed to Internet users’ search results, no evidence or assertion to that effect was put forward by the Respondent despite two opportunities in which it might have raised the issue. In any event, a domain name holder is ultimately responsible for the content appearing at its website (see section 3.5 of the WIPO Overview 3.0). In this case, the evidence before the Panel demonstrated that portions of that content targeted the Complainant. The PPC links do not relate exclusively to the alleged dictionary meaning.
In all of the above circumstances, the majority of the Panel finds on the balance of probabilities that the Respondent acquired and used the disputed domain name in bad faith and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(iii) of the Policy.
F. Reverse Domain Name Hijacking (“RDNH”)
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
A commentary on the nature of RDNH together with examples of previous cases under the Policy in which it has been found is detailed in section 4.16 of the WIPO Overview 3.0.
In the present case, the majority of the Panel has found that the Complaint has been successful. It follows that the majority do not consider that the Policy has been used in bad faith by the Complainant. However, in light of the fact that the Panel are not unanimous in this respect, the majority of the Panel considers that it may be helpful to discuss the arguments of the Parties in this respect. The focus of the Respondent’s submissions is that the facts of this case fall into the “Plan B” type, which the Respondent describes as “using the Policy after failing to acquire the disputed domain name”. By contrast, the Complainant insists that it acted properly in beginning and/or continuing with the Complaint.
The majority of the Panel accept that the Complaint was filed after the Complainant failed to acquire the disputed domain name by negotiation, that the Complainant made an unsolicited approach to the Respondent, that the Complainant’s agent did not disclose the Complainant’s identity or trademark rights, that there were rounds of offers and counter-offers, and that the Parties failed to agree on a price, after which the Complaint was filed. In the majority’s opinion, these facts on their own do not automatically lead to a finding of RDNH. There must be other features present, such as, for example, a failure on the part of the complainant to accept that, for example, the domain name was a dictionary word with intrinsic value coupled with the fact that there are no indications that such complainant’s rights have been targeted. Where, in a case with those features, a complainant nevertheless commences the administrative proceeding in order purely to increase leverage in the negotiations concerned, that can lead to a finding of RDNH (see, for example, Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653).
This is not a case where the Complainant’s only real gripe is the price the Respondent demanded for the disputed domain name. The high price is put forward as a concern, but only in the context of the present record which shows that the disputed domain name is so unusual, being a transliterated version of the name of a significant company (which can also be a dictionary word in Arabic once rendered in that script) that the transliteration “maaden” effectively refers to the Complainant alone, at least in the online context. Suitable evidence of this fact was supplied in the form of an unchallenged Google search. Other evidence supported the Complainant’s strong and longstanding online presence under the transliterated term. In all of these circumstances, the very high price requested for the disputed domain name (and the nature of the various PPC links, at worst pointing to the Complainant’s competitors in some examples and at best not exclusively referencing any particular dictionary meaning in others) raised reasonable concerns that the Complainant was being targeted.
These concerns were enhanced once the underlying registrant had been revealed, and the Complainant was faced with the “Russian doll” scenario described earlier. The majority of the Panel notes that this particular disclosed registrant has been described by a previous panel as supplying privacy services either to a single or multiple cybersquatters, whereby the use of this particular service arguably now carries with it a presumption of bad faith registration and use (see: Discover Financial Services v. Domain Administrator, Fundacion Privacy Services LTD, supra). The Complainant was clear in the amended Complaint that this entity has been subject to multiple previous findings of bad faith under the Policy.
The merits of the case in chief, as discussed above, have been found to favor the Complainant by the majority, and in particular, there was held to be a case to answer on the facts and circumstances, where the Respondent’s lack of candor raised a question as to its underlying motives in acquiring the disputed domain name (at a date it was not prepared to vouch for other than partially in its declaration). The Complainant did not disregard established Policy precedent, for example, regarding “dictionary word” domain names. Its pleadings focus on the fact that the registration of a dictionary word is only permissible where this is done without intent to target a trademark owner. That is the correct position as the majority of the Panel understands it. While the Complainant’s registered trademarks post-date the date when the Respondent claims to have acquired the disputed domain name, insufficient evidence was provided of the alleged acquisition date. The majority found, based on the record, that the Complainant had in any event established unregistered trademark rights in MA’ADEN within the meaning of the Policy through longstanding use before the alleged acquisition date. In short, it cannot be said that the mere existence of a potential dictionary connotation for a domain name, and the fact that a complaint has been brought after negotiations have failed due to price, automatically leads to a finding of RDNH. In appropriate circumstances, where a complainant’s concerns about the Respondent’s conduct justifiably extend beyond a price-related gripe, the majority of the Panel considers that such a complainant is entitled to put the respondent to the proof as it has done here.
In these circumstances, the Panel, by majority, denies the request for a finding of RDNH.
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 <maaden.com> be transferred to the Complainant.
Andrew D. S. Lothian
Hoda T. Barakat
Date: February 7, 2022
Although there are some interesting nuances in this case, I do not believe that the Complainant met its burden of proof in establishing that the disputed domain name, <maaden.com>, was both registered and used in bad faith. And for that reason, I would not have ordered the transfer of the disputed domain name.
The majority sets forth that the Complainant has established the requisite prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has used the domain name in connection with PPC links that, according to the evidence provided by the Complainant, points to potential competitors of the Complainant. I agree that merely registering a dictionary word domain name does not itself confer rights or legitimate interest on a respondent, but I do not agree in this case that the PPC links associated with the disputed domain name were used to trade off the Complainant’s trademark rights. PPC link technology has evolved considerably since its early days where such links were either static, or if they were dynamic, they were based on the content of the site and the domain name itself. Putting the privacy implications aside, today many PPC links display advertisements based on previous search results of the user.
In this case, that is what I believe we have here. When visiting the disputed domain name, this Panelist did not get links to the Complainant or to any of its competitors, but rather links that were related to previous searches I performed (one related to my daughter’s college search and another about laptops that I was researching). Therefore, the evidence provided by the Complainant could just as likely have been based on the previous activity of the Complainant as opposed to the use of the domain name to profit off the third-party mark.
Even assuming arguendo that the Complainant has established its prima facie case, there is little to no evidence presented by the Complainant that the Respondent who acquired the domain name more than a decade ago registered that name with the Complainant in mind. The majority questions whether the disputed domain name was actually acquired by the Respondent from the original owner in May 2011 citing the lack of supporting evidence provided by the Respondent other than a signed declaration. I agree that more evidence would have been helpful. However, given the fact that the declaration was drafted and submitted by an attorney, that could face substantial penalties for submitting a false declaration (including the loss of their legal license), combined with the fact that there is no evidence presented by the Complainant otherwise, I believe we have to accept what is before us without suspicion.
The majority is correct that the Panel cannot know or assess whether the Respondent truly saw the disputed domain name as a “dictionary word” or something else in 2011 when it acquired the disputed domain name. The majority uses the lack of information provided by the Respondent in its responses to infer based on the balance of probabilities that the Respondent did not acquire the domain name for its dictionary meaning, but rather for the meaning associated with the Complainant. This Panelist is not comfortable jumping to that conclusion based on the actual evidence submitted.
If, in fact, the domain name was acquired with the Complainant in mind, why has an entire decade gone by without the Respondent contacting the Complainant to purchase the name? In this case, after a decade, it was the Complainant, through an independent party, that initiated contact with the Respondent. In fact, there is no evidence in the record that indicates that the third party (who misrepresented what it intended to use the domain name for) ever identified that it was the Complainant that hired the independent party. According to the Respondent, it did not know that the Complainant was involved until the filing of this UDRP. The Complainant does not offer any evidence refuting this point and at the end of the day it is not the Respondent’s burden to prove it registered (and is using) the domain name in good faith, but rather the Complainant’s burden to prove that the Respondent registered the domain name in bad faith.
The majority infers that the lack of evidence submitted by the Respondent regarding how it knew that this name a transliterated Arabic term and that it meant “minerals” was a deliberate omission. It also points to the fact that all of the other examples submitted by the Respondent of “dictionary word” domain names are in English. This fact also raised questions for this Panelist, but not enough of a question to infer bad faith especially given the other facts in this case.
This Panelist is troubled by the “Russian doll” scenario presented by the Registrar when responding to the Provider in revealing only the privacy service and not the name of the actual registrant. But that said, the Respondent did file a timely response through his counsel and did ultimately reveal his name. It is unknown to this Panelist whether this was an issue created by the Registrar for the Respondent or by the Respondent itself. In either case, the majority uses this as an indicium of bad faith, citing a previous Panel in Discover Financial Services v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-1514.
However, other than the use of the same privacy service, the facts in this case are not at all similar to that in Discover Financial Services. In that case, the Respondent’s identity was never revealed. There was no response filed at all. In addition, that case involved the registration of 13 domain names that were clearly on their face problematic and trading off the goodwill of the Complainant Discover Financial Services (e.g., discoverersonaloans.com>, <discoverperoanloans.com>, <discoverperonslloans.com>, <discoverpersoanalloans.com>, <discoverpersonailloans.com>, <discoverpersonanlloan.com>, to name a few). Aside from the fact that the Respondent never revealed itself, there was no possible argument that those were generic or dictionary terms. In this case, the Respondent revealed itself to the Provider through its timely responsive pleadings and therefore I do not agree that the Discover decision applies. In addition, although I agree that the Registrar should have revealed the true identity of the Respondent right away, I am not comfortable using the Registrar’s undesirable behavior against the Respondent.
At the end of the day, the two biggest issues for me in this case, however, are the fact that there is absolutely no evidence of targeting presented by the Complainant, and that the Complainant only filed this action after negotiations for the sale of the domain name proved to be unsuccessful.
The Respondent is in the business of acquiring and selling generic domain names including <college.com>, <smoking.com>, <pills.com>, <med.com>, etc. There is a long line of cases that have found that the purchase and sale of “generic” or descriptive domain names constitutes use of the domain name in connection with a bona fide offering of goods or services provided that the “registration of the domain name was not undertaken with intent to profit from or otherwise abuse a complainant’s trademark rights.” X6D Limited v. Telepathy, Inc., WIPO Case No. D2010-1519. (citing General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc.), NAF Claim No. 92531 (<craftwork.com>); Shirmax Retail Ltd. v. CES Marketing Group, Inc., E-Resolution Case No. AF-0104 (<thyme.com>); CAR TOYS, INC. v. INFORMA UNLIMITED, INC., NAF Claim No. 93682 (<cartoys.net>); Robert Chestnutt v. Jennifer Tumminelli, WIPO Case No. D2000-1758 (<racegirl.com>); COMING ATTRACTIONS, LTD. v. COMINGATTRACTIONS.COM, NAF Claim No. 94341 (<comingattractions.com>); John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray, WIPO Case No. D2000-1403 (<financialreview.com>)).
Although the other domain names registered by the Respondent were all English generic terms, there is no evidence in the record that establishes that the Respondent has engaged in a pattern of conduct or any other activity in which the objective was to benefit from the Complainant’s trademark. Hotel Plaza Limited, Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o WHOIS Identity Shield/Vertical Axis, Inc., WIPO Case No. D2008-1760. Moreover, there is also no evidence in the record that would “unequivocally lead the Panel to infer that the Respondent knew of the Complainant’s existence or the MA’ADEN trademark.” Id.
Further, neither party disputes that it was the Complainant, through an “independent” party, that reached out to the Respondent and made an initial unsolicited offer to purchase the domain name. The independent third party acting on behalf of the Complainant represented to the Respondent that it wanted to purchase the domain name to use in connection with a skincare or beauty blog. At that time, there was no reason for the Respondent to know that it was actually the Complainant that was behind this offer. In fact, there is no evidence in the record that establishes that the Respondent ever knew the true identity of the intended beneficiary of the unsolicited offer until this present UDRP action was filed.
Responding to unsolicited offers alone are not evidence of bad faith regardless of how outrageously high the Complainant believes to be the price. In Costa Crociere S.P.A. v. Yoshiki Okada,
WIPO Case No.
D2018-1632, the Respondent asked for USD1 million in response to an unsolicited offer to purchase the domain name <costa.com>. The panel there stated “[…] it is the view of the Panel that, where an investor in domain names legitimately registers a domain name which appreciates in value, it is reasonable to expect the registrant to seek the full price it believes to be achievable for the sale of that name. The Respondent made no approach to the Complainant for 21 years and quoted the price in question in response to an enquiry from the Complainant. In the view of the Panel, the facts of the case overall are more supportive of an inference that the Respondent registered the disputed domain name because of its Spanish dictionary meaning and in the hope that it would appreciate in value generally, rather than with the specific intention of selling it to the Complainant or a competitor of the Complainant for an excessive price.” Id. This Panelist agreed with that rationale.
Finally, I believe a decent case could be made that this was a “Plan B” RDNH case whereby the Complainant invokes the Policy only after failing to acquire the domain name through negotiation. Such conduct has been found in a number of cases to be indicative of Reverse Domain Name Hijacking. See BERNINA International AG v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2016-1811 (“This stratagem has been described in several earlier UDRP cases as ‘a highly improper purpose’ and it has contributed to findings of RDNH.”) (citing Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653 (holding “Plan B” approach as a basis for a finding of RDNH) and Nova Holdings Limited, Nova International Limited, and G.R. Events Limited v. Manheim Equities, Inc. and Product Reports, Inc., WIPO Case No. D2015-0202 (use of UDRP proceeding to increase bargaining leverage in sale negotiations called “a highly improper purpose”). As the Respondent points out, Complainant here actually entered into three rounds of negotiations prior to filing this immediate action.
In light of the above, under the totality of circumstance, I do not believe the Complainant has demonstrated that the disputed domain name was registered or used in bad faith.
Jeffrey J. Neuman
Date: February 7, 2022