WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gulf DTH LDC v. Mohammed Alsayed
Case No. DAE2015-0003
1. The Parties
The Complainant is Gulf DTH LDC of Grand Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and the Northern Ireland, represented by Clyde & Co., United Arab Emirates.
The Respondent is Mohammed Alsayed of United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <osn.ae> is registered with AE Domain Administration (.aeDA).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2015. On October 14, 2015, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On October 21, 2015, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent became registered as the holder of the disputed domain name on January 29, 2015;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the "Policy"), and the Policy applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Rules"), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on November 16, 2015.
The Center appointed Warwick Rothnie as panelists in this matter on November 25, 2015. 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 and finds that it was properly constituted.
4. Factual Background
The Complainant operates a pay television network in a number of Middle East and North African countries. It first commenced operations under the name OSN in late 2009 or early 2010. Before that, it operated under the name Orbit Showtime Network.
According to the Complaint, the Complainant has over 200 trademark registrations for OSN around the world. These include registrations in the United Arab Emirates, in plain type or in slightly stylized form, in International Classes 35, 38 and 41 including Trademark Numbers 105271, 105272 and 218235, each of which is in plain block capitals. The first two were filed on December 30, 2009 and registered on June 30, 2010. Trademark Registration No. 218325 was filed on September 22, 2014 and registered on December 31, 2014.
According to the Registrar, the disputed domain name was first registered on January 14, 2010. However, it was first registered in the Respondent's name on January 29, 2015.
When the Complaint was submitted, the disputed domain name resolved to a website which stated "This Domain Name is for sale" and stated as the price AED 50,000 which was about USD 13,630. There was a background image of a falcon. The webpage automatically redirected to the website at "www.my.ae", another website associated with the Respondent.
5. Discussion and Findings
Paragraph 6(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the three trademarks registered in the United Arab Emirates identified in section 4 above. It has also proved ownership of numerous other trademarks, but is not necessary in the circumstances to refer further to them.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: eBay Inc. v. Akram Mehmood WIPO Case No. DAE2007-0001. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the ".ae" component of the disputed domain name as a functional aspect of the domain name system: OSRAM GmbH v. Tom Zhu, WIPO Case No. DAE2014-0002. Applying that rule in the present case, the disputed domain name is identical to the Complainant's proven trademarks.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 6(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See eBay Inc. v. Akram Mehmood, supra.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name and does not appear to be carrying on any genuine business by reference to "OSN". The offer for sale of the disputed domain name at a very substantial premium over the standard rate does not qualify as legitimate noncommercial or fair use.
These matters are usually sufficient to establish a showing of a prima facie case under this head.
The Panel notes, however, that the disputed domain name consists of a three letter acronym or contraction. Such domain names can cause complications under the Policy as they can be applicable to any number of names or expressions which may be abbreviated to the three letters involved.
The issue of dealing with such domain names led to a division between the panelists in AGL Energy Limited v. James M. van Johns, WIPO Case No. D2013-1817, under the Uniform Domain Name Dispute Resolution Policy ("UDRP"). Two of the learned panelists reviewed the conduct of the respondent which they found demonstrated he had a policy of registering three letter domain names for their intrinsic value rather than any bad faith motivation. The third learned panelist considered that the registrant needed to demonstrate some bona fide connection between his activities and the relevant domain name such as a genuine offering goods or services for sale by reference to the acronym or commonly being known by the acronym.
In the present case, it is not strictly necessary for the Panel to adopt one or the other approach. In this case, there is no showing by the Respondent of a business model in which he registers such domain names for their "intrinsic value". On the contrary, the Complainant points out that background image of a falcon which appeared on the website which the disputed domain name initially resolved to is the national emblem of the United Arab Emirates. It is not clear to the Panel whether the Complainant claims to be owned by, or an arm of, the United Arab Emirates government, but the Complainant contends the use of the image shows an intention to associate the disputed domain name with the United Arab Emirates. The Respondent has not sought to suggest that the acronym has been derived from some other name or usage. Moreover, the Complainant points out that the Respondent, through the website at the domain name <my.ae> offers for sale domain names featuring or based on other well-known brands including for example <facebook.ae> and <pinkberry.ae>.
In this state of the evidence, the Respondent's activities would not qualify as a right or legitimate interest on either of the approaches taken in the AGL Energy v van Johns case, supra. Accordingly, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy also.
C. Registered or is Being Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has either been registered in bad faith or is being used in bad faith by the Respondent: eBay Inc. v. Akram Mehmood WIPO, supra. Paragraph 6(b) sets out four examples of situations which may constitute bad faith registration or use under the Policy. These essentially correspond to the provisions of paragraph 4(b) of the UDRP.
As noted above, the Respondent has been offering the disputed domain name for sale for a price well in excess of the usual out of pocket costs in registering a domain name. It has been doing so in circumstances where it has been found not to have any right or legitimate interest in the disputed domain name and it has not even attempted to establish a claim to a right or legitimate interest. It is well established that such conduct constitutes use in bad faith under the Policy: see e.g. Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson c/o Sony Ericsson Mobile Communications AB, Sony corporation, c/o Sony Ericsson Mobile Communications AB v. Mohamed Ali Aal Ali, WIPO Case No. DAE2006-0002; Gulf Talent FZ-LLC v. F. A. (RWG000000000B0D5), WIPO Case No. DAE2010-0001.
Accordingly, the Complainant has satisfied this requirement under the Policy.
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <osn.ae> be transferred to the Complainant.
Warwick A Rothnie
Date: November 27, 2015