WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zalatimo Brothers for Sweets, Ahmed Zalatimo Company and partners v. Jebrail Jebrail, Zalatimoh Sweets UAE

Case No. DAE2016-0002

1. The Parties

The Complainant is Zalatimo Brothers for Sweets, Ahmed Zalatimo Company and partners of Amman, Jordan, represented by Talal Abu Ghazaleh Legal, Egypt.

The Respondent is Jebrail Jebrail, Zalatimoh Sweets UAE of United Arab Emirates (“UAE”).

2. The Domain Name and Registrar

The disputed domain name <zalatimo.ae> (“the Disputed Domain Name”) is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2016. On June 14, 2016, the Center transmitted by email to .aeDA a request for registrar verification in connection with the Disputed Domain Name. On June 15, 2016,.aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (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 June 27, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 18, 2016.

The Center appointed Isabel Davies as panelists in this matter on August 15, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, which was founded in 1860 has registered trademarks for ZALATIMO BROTHERS FOR SWEETS including the name Zalatimo registered from 1999 in the Middle East including UAE and Europe.

The Complainant’s domain name <zalatimo.com> was registered on June 8, 1998.

The Disputed Domain Name was registered on May 9, 2016.

5. Parties’ Contentions

A. Complainant

(i). The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant states that it was founded in 1860 as Zalatimo Brothers for Sweets by the Complainant’s great grandfather Mohammad Zalatimo and has obtained many registered trademarks which include in them the name Zalatimo including those in the Middle East and Europe some dating back to 1998.

The Complainant also has the domain name <zalatimo.com> since June 8, 1998.

The Complainant states that it has extensive and continuous use which has led the trademark to become famous through media recognition, advertisements, e-commerce and exports since 1999. The Complainant annexes evidence of the sales volume of sweets under the Complainant’s trademark bought by credit card by citizens of the UAE amounting to 1,417,065.23 Dirham.

The Complainant annexes evidence of the mark being acknowledged by articles and awards and in countries such as Japan.

In Zalatimo Brothers for Sweets (Ahmed Zalatimo Company and partners) v. Jebril Abu Marouf, WIPO Case No. D2016-0460, the panel ordered that the domain name <zalatimoh.com> be transferred to the Complainant and before the Dubai Court in lawsuit no. 1886/2104 judgement was given in favour of the Complainant on the basis that the only letter differentiating the main element of the disputed domain name was an additional “h”.

The Complainant submits that, based on this information, the Disputed Domain Name is identical and confusingly similar to the Complainant’s trademarks.

(ii). The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

The Complainant submits that, although the Complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the task of proving a negative because such information is frequently within the sole possession of the Respondent. Accordingly, the Complainant needs only make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Upon such a showing, the burden shifts to the Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Name

The Complainant contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name for the following reasons:

1. The Respondent is not affiliated with the Complainant in any way;

2. The Complainant has not authorized the Respondent to use its trademarks, or to seek the registration of any domain name incorporating said trademarks ZALATIMO BROTHERS FOR SWEETS;

3. The Respondent has no prior rights or legitimate interests in the Disputed Domain Name as the Complainant’s registrations of the trademarks ZALATIMO BROTHERS FOR SWEETS dates back to 1999 and its domain name from 1998 both of which precede the Respondent’s registration of the Disputed Domain Name.

The Complainant submits that the Respondent has not registered the Disputed Domain Name in connection with a bona fide intent as the Respondent is not a licensee of the Complainant or authorized to take advantage of the Complainant’s rights and does not have the right to register the Disputed Domain Name.

The Complainant further contends that the Respondent is using the Disputed Domain Name to mislead the public by trying to make consumers to believe that it is the same business as the Complainant. This causes financial loss and disrupts the Complainant’s reputation because the Respondent is not a licensee nor authorized to use the Complainant’s trademark on the same products, with the same company logo, same designs of boxes and same colors of the trademark logo (blue).

Accordingly, the Complainant submits, a domain name that misleads users does not confer rights or legitimate interests in favor of the Respondent.

The Respondent, the Complainant says, knows about the Complainant’s registered trademarks which are protected worldwide including UAE (i.e. the country of the Respondent) since 1999. In order to take advantage and obtain a commercial gain from the Complainant’s reputation since 1860, the Respondent has established a company in UAE in 2014 selling the same products using a similar logo, trademark, trade name, colors, font and style of writing.

The Complainant refers to lawsuit no. 1886/2014 Commercial before Dubai Courts mentioned below where judgment was issued in the Complainant’s favor on the basis that the Respondent has no legitimate right or interest in the trademark and it is an infringement of the Complainant’s rights. In Zalatimo Brothers for Sweets (Ahmed Zalatimo Company and partners) v. Jebril Abu Marouf, supra, the same finding was made.

Accordingly, the Complainant submits that it has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

(iii). The Disputed Domain Name has been registered or is being used in bad faith

The Complainant contends that the Disputed Domain Name has been registered in bad faith and it is implausible that the Respondent was unaware of the Complainant’s trademark ZALATIMO BROTHERS FOR SWEETS when the Respondent registered the Disputed Domain Name. The Complainant submits that its trademark ZALATIMO BROTHERS FOR SWEETS is well known throughout the world including UAE and that it is incorporated in its entirety in the Disputed Domain Name, which demonstrates that the Respondent must have been aware of the existence of the Complainant’s trademark ZALATIMO BROTHERS FOR SWEETS. The bad faith is clear from the fact that the Disputed Domain Name is so obviously connected with a well-known trademark.

The Complainant therefore contends that consumers buy the products at the same price as those of the Complainant thinking it is the original product but are then surprised by the bad quality and taste of the product because of the similarity of the trademark, products, boxes and sweets as shown in the websites “www.zalatimo.ae” and “www.zalatimo.com”.

The Complainant therefore contends that the Respondent, by using the Disputed Domain Name in this way, has in all likelihood intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant annexes evidence that the Respondent has previously created pages on Facebook such as Zalatimoh Arabic Sweets L.L.C, Zalatimoh.dubai, in 2014.

The Complainant annexes documents evidencing these activities which include a message sent from a family member of the Respondent to the Manager of the IT Department in the Complainant’s company stating that “Tell your manager that I can waive the trade name if he pays 5 milliom Dirham”.

The Complainant states that an ex-employee in the Complainant’s company says in his apology that: “I was shocked that the new company I have joined Zalatimoh Arabic Sweets is imitating the original company Zalatimo Brothers for Sweets in everything such as the logo, cards, colors and when I try to leave the company they obliged me to pay 1500 Dinar and try to obstacle my travel.”

The Complainant also annexes copies of the correspondence between consumers and the Complainant on Facebook who are complaining that they bought Zalatimo products and they are surprised by the bad quality and bad taste and they are asking Zalatimo Brothers for Sweets whether these products belong to the company or they are counterfeited products. The Complainant replies that they are counterfeited products and they are taking the suitable legal actions to stop this infringement.

The Complainant therefore submits that the Respondent by his bad faith is commercially gaining a lot of money based on the Complainant’s good and well-known reputation and on the other hand the Complainant is facing a lot of complaints from consumers and incurring huge financial loss as a result of this infringement.

All the above, the Complainant submits, proves the bad faith of the Respondent and that the Respondent has registered the Disputed Domain Name for the purpose of disrupting the business of the Complainant by attracting the attention of the public for commercial gain by creating a likelihood of confusion.

The Complainant therefore submits that all the above established that the Respondent registered the Disputed Domain Name in bad faith and its use of the Complainant’s trademark in the Disputed Domain Name confuses Internet users who may wrongly ascribe the services and goods on the website to the Complainant’s business. Accordingly, the Respondent’s use of the Disputed Domain Name to attract, for commercial gain, Internet users to his own website is use in bad faith.

B. Respondent

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

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to the 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;

(iii) The Disputed Domain Name has been registered or is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant was founded in 1860 as Zalatimo Brothers for Sweets by the Complainant’s great grandfather Mohammad Zalatimo, has obtained many registered trademarks including the ZALATIMO BROTHERS FOR SWEETS including those in the Middle East and Europe some dating back to 1998 and that the Complainant also has the domain name <zalatimo.com> registered since June 8, 1998.

The Panel accepts that the Complainant has provided evidence of extensive and continuous use which has led the trademark to become famous through media recognition, advertisements, e-commerce and exports since 1999 and of international reputation.

The Panel notes the previous Zalatimo Brothers for Sweets (Ahmed Zalatimo Company and partners) v. Jebril Abu Marouf, Arabic Sweet, supra in which the panel ordered that the domain name <zalatimoh.com> be transferred to the Complainant and the Dubai Court lawsuit no. 1886/2104 in which judgement was given in favour of the Complainant on the basis that the only letter differentiating the main element of the domain name was an additional “h”.

The Panel finds that the distinctive part of the Complainant’s ZALATIMO BROTHERS FOR SWEETS trademark is the name “Zalatimo” and that the Complainant’s website is found at “www.zalatimo.com” using only the family name.

The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Panel finds that the Respondent is not affiliated with the Complainant in any way, that the Complainant has not authorized the Respondent to use its trademarks, or to register any domain name incorporating the Complainant’s trademarks ZALATIMO BROTHERS FOR SWEETS or the distinctive element “zalatimo” and that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name; as the Complainant’s registrations of the trademarks ZALATIMO BROTHERS FOR SWEETS date back to 1999 and its domain name from 1998 precede the Respondent’s registration of the Disputed Domain Name.

The Panel finds that the Respondent has not registered the Disputed Domain Name in good faith as the Respondent is not a licensee of the Complainant or authorized to take advantage of the Complainant’s rights or to register the Disputed Domain Name.

Mere registration of a disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name as found in Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666.

The Panel finds that the Respondent uses the distinctive element of the ZALATIMO BROTHERS FOR SWEETS trademark to mislead the public, trying to make consumers believe that it is, or is connected with, the business of the Complainant. The Panel accepts that this causes financial loss and disrupts the Complainant’s business and affects its reputation by imitating the Complainant’s trademark, company logo, designs and colors of boxes, colors and fonts as well as the style of the trademark.

The Panel accepts that a domain name which misleads users does not confer rights or legitimate interests to the Respondent.

The Panel notes that in lawsuit no. 1886/2014 Commercial before Dubai Courts judgment was issued in the Complainant’s favor on the basis that the Respondent has no right or legitimate interest in the trademark and it is an infringement of the Complainant’s rights. This was also found in Zalatimo Brothers for Sweets (Ahmed Zalatimo Company and partners) v. Jebril Abu Marouf, Arabic Sweet, supra.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and used in bad faith

The Panel finds that it is inconceivable that the Respondent was unaware of the Complainant’s trademark ZALATIMO BROTHERS FOR SWEETS when the Respondent registered the Disputed Domain Name because the trademark is well known throughout the world including UAE and because the distinctive element of the trademark “Zalatimo” is used in its entirety in the Disputed Domain Name, which demonstrates that the Respondent must have been aware of the existence of the Complainant’s trademark.

The Panel accepts that consumers buy the Respondent’s products because of the similarity of the trademark, products, boxes and sweets as shown in the Respondent’s website “www.zalatimo.ae”, believing them to be those of the Complainant.

This is evidenced by copies of correspondence between consumers and the Complainant on Facebook who are complaining that they bought Zalatimo products and they were surprised by its bad quality and bad taste and they are asking the Complainant whether these products belong to the Complainant or are counterfeited products.

Using a domain name to intentionally attract Internet users to a website by creating confusion with a complainant’s trademark is evidence of bad faith. Compagnie Générate des Etablissements Michelin CGEM-Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752.

The Panel finds that the Respondent, by using the Disputed Domain Name in this way, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website

The Panel finds that the evidence annexed to the Complaint further demonstrates the Respondent’s knowledge and use in bad faith not least in the light of the message sent from a family member of the Respondent on Facebook to the Manager of the IT Department in the Complainant’s company stating that “Tell your manager that I can waive the trade name if he pays 5 milliom Dirham”.

The Panel accepts that the Respondent is making money based on the Complainant’s reputation and that the Complainant is facing complaints from consumers and incurring loss as a result of this confusion.

The Panel therefore finds that the Respondent has registered the Disputed Domain Name for the purpose of disrupting the business of the Complainant by attracting the attention of the public, for commercial gain, by creating a likelihood of confusion.

The Panel finds that the Disputed Domain Name was registered and used in bad faith.

7. Decision

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 <zalatimo.ae> be transferred to the Complainant.

Isabel Davies
Panelist
Date: August 25, 2016