WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AIH General Merchandise UG (haftungsbeschrankt) & Co. KG v. Ahmed ElBaradey

Case No. DAE2017-0002

1. The Parties

Complainant is AIH General Merchandise UG (haftungsbeschrankt) & Co. KG of Berlin, Germany, represented by Rösler Rasch van der Heide & Partner, Germany.

Respondent is Ahmed ElBaradey of Dubai, United Arab Emirates ("UAE").

2. The Domain Name and Registrar

The disputed domain name <jumia.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 May 16, 2017. On May 16, 2017, the Center transmitted by email to .aeDA a request for registrar verification in connection with the disputed domain name. On May 18, 2017, .aeDA transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy – 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 Respondent of the Complaint, and the proceedings commenced on May 31, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2017. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on June 21, 2017.

The Center appointed David Perkins as panelist in this matter on June 29, 2017. 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

4.A. Complainant

4.A.1 In 2012, Complainant, a company located in Berlin, explains that it founded an online business in Africa under the name "Jumia" using the Internet "to connect people in that continent and to provide them with a solution to fulfil their daily needs." An extract from Complainant's website reads:

"Over 500,000 local African companies are making business on Jumia every day. We are taking the entire economy online and enabling small, medium and large African companies to find new customers and serve them in a new way."

Its co-founders, Jeremy Hodara and Sacha Poignonnec are both former McKinsey employees with broad business backgrounds.

4.A.2 An extract from Wikipedia, which is exhibited to the Complaint, reports that as of 2016 Jumia had 126 operations across 23 African countries, thereby covering 90 percent of African GDP, 3,000 employees across Africa and 3 million customers. The Wikipedia entry describes Jumia as "the leading actor of online commerce in Africa." The entry goes on to describe its business as comprising:

"- Jumia Market is a community based online marketplace.
- Jumia Travel is a hotel booking website
- Jumia Food is an online food ordering site
- Jumia House is a real estate platform
- Jumia Cars is an online car dealer marketplace
- Jumia Jobs is an online job platform
- Jumia Deals is an online classifieds platform
- Jumia Services is a B2B logistics provider for online commerce."

The JUMIA trademarks/service marks

4.A.3 The Complaint exhibits a list of some 40 countries in Africa where it is the registered proprietor of or applicant for the JUMIA trademark, as well having registrations of that mark in France and Germany. Exhibited to the Complaint are the following registrations.

International Registration IR 1,168,947, registered on December 6, 2012, for the mark JUMIA in classes 9; 16; 35; 36; and 39 in Algeria; Botswana; Ghana; Egypt; Kenya; Morocco; and Namibia.

International Registration IR 1,138,171, registered on August 31, 2012, for the mark JUMIA in classes 3; 6; 8; 11; 14; 18; 20; 21; 24; 25; 28; and 37 in the same seven countries as above.

African Intellectual Property Organization Registration No. 73,760, filed on December 21, 2012, for the mark JUMIA in classes 35 and 37 in Benin; Burkina Faso; Cameroon; Central Africa; Congo; Ivory Coast; Gabon; Guinea; Guinea Bissau; Equatorial Guinea; Mali; Mauritania; Niger; Senegal; Chad; and Togo.

Ethiopian Registration No. FTM/4235/16, filed August 16, 2013, for the mark JUMIA in classes 35 and 37.

German Registration No. DE 30 2012 006 472, filed July 27, 2012 (granted August 31, 2012), for the mark JUMIA in classes 3; 6; 8; 11; 14; 18; 20; 21; 24; 25; 28; and 37.

German Registration No. DE 30 2012 037 033, filed June 27, 2012 (granted August 31, 2012), for the mark JUMIA in classes 9; 16; 35; 36; and 39.

Nigerian Registration No. 98,135, filed July 10, 2012 (granted August 30, 2012), for the mark JUMIA in class 35.

South African Registration No. 2012/33782, filed December 12, 2012 (granted June 27, 2012), for the mark JUMIA in class 35.

The JUMIA domain name

4.A.4 The Complainant's Jumia website resolves from Complainant's <jumia.com> domain name. The Complaint omits to say when that domain name was registered. It does, however, say that, in addition to its <jumia.com> domain name, Complainant also owns and uses domain names under a number of country code top level domains ("ccTLDs"), including <jumia.com.eg> and <jumia.en>.

The origin of the JUMIA name and mark

4.A.5 Complainant asserts it developed the JUMIA name and mark, which it says is meaningless in dictionary terms and is "globally only connected to Complainant and its services." In that respect, the Complaint exhibits a Google search which shows that the first 40 entries against "Jumia" all provide links to websites of or about Complainant. Further, using the detect language function of Google Translate to find translations of "Jumia" produced nothing recognisable. Still further, the Complaint exhibits a Wikipedia search against Jumia, which produced only descriptions of Complainant and its business.

4.B. Respondent

4.B.1 In the absence of a Response, all that is known of Respondent is derived from the Complaint and its exhibits. The Registrar's reply to the Center states that the disputed domain name was registered on March 31, 2016, and acquired by Respondent on January 11, 2017.

4.B.2 The Complaint depicts extracts from the website to which the disputed domain name resolves. As will be noted in paragraph 5.A below, Complainant asserts that the structure and look and feel of Respondent's website is clearly copied from its own website, even down to using the same "shopping trolley" logo.

5. Parties' Contentions

5.A. Complainant

Identical or Confusingly Similar

5.A.1 Complainant asserts that its JUMIA name and mark are totally unique for the reasons explained in paragraph 4.A. above. Consequently, Complainant asserts that it has rights in the JUMIA mark.

5.A.2 The country code apart, Complainant says that the disputed domain name is identical to its JUMIA name and mark.

Rights or Legitimate Interests

5.A.3 Complainant asserts that Respondent has no rights in the term "jumia", as it is invented by Complainant and has no meaning. Further, Complainant says that Respondent has no registered trademarks for JUMIA in the UAE or elsewhere.

Registered or is Being Used in Bad Faith

5.A.4 Complainant's case is that Respondent has not only copied Complainant's JUMIA name and mark but also its corporate identity. By depicting extracts from Complainant's and Respondent's websites side by side in the Complaint, Complainant asserts that it is demonstrable that (1) Respondent has copied the structure and "look-and-feel" of its website; (2) Respondent's website is, like Complainant's, an online shopping platform for a broad range of products; and (3) that the logos are similar. In sum, Complainant's case is that, by using the disputed domain name, Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's JUMIA name and mark as to the source, sponsorship, affiliation or endorsement of Respondent's website. See paragraph 6(b)(iv) of the Policy.

5.B. Respondent

As noted, no Response has been filed.

6. Discussion and Findings

6.1 The Policy paragraph 6(a) provides that a complainant must prove each of the following in order to succeed in an administrative proceeding.

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered or is being used in bad faith.

6.2 The Policy paragraph 6(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate Respondent's rights or legitimate interests in the disputed domain name.

6.3 The Policy paragraph 6(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration or use of the disputed domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 6(b) and 6(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 6(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 As noted in paragraph 4.A.3 above, Complainant has trademark registrations for the mark JUMIA in France, Germany and some 40 African countries. Complainant is also the registrant of the <jumia.com> domain name and a number of ccTLDs incorporating its JUMIA mark. See paragraph 4.A.4 above.

6.6 Complainant does not, however, have its JUMIA trademark registered in the UAE where Respondent is located. But, as noted in section 1.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")¹, the term "trademark or service mark" encompasses both registered and unregistered marks. Guidance as to what a complainant must demonstrate to establish an unregistered mark is given in section 1.3 of the WIPO Overview 3.0 and the decisions cited thereunder. For example, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services. Where an Internet presence is involved, as it is in this case, relevant evidence of acquired distinctiveness can include factors such as the type and scope of market activities and the nature of the complainant's goods and/or services. In this case, as demonstrated in the Complaint, Respondent's website is offering similar goods to those offered on Complainant's website.

6.7 The WIPO Overview 3.0 goes on to say:

"As noted in section 1.1.2, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP."

Section 1.1.2 of the WIPO Overview 3.0 states that, "[n]oting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element."

6.8 Section 1.3 of the WIPO Overview 3.0 then goes on to state:

"The fact that a respondent is shown to have been targeting the complainant's mark (e.g., based on the manner in which the related website is used) may support the complainant's assertion that its mark has achieved significance as a source identifier."

In that respect, the striking similarity of Respondent's website to which the disputed domain name resolves to Complainant's website is noted in paragraphs 4.B.2 and 5.A.4 above.

6.9 From paragraphs 4.A.1, 4.A.2 and 4.A.5 above, the Panel is satisfied that Complainant's JUMIA trademark is well known throughout the continent of Africa. Additionally, the abbreviation EMEA for Europe and the Middle East and Africa is used by institutions and governments, as well as in marketing and business. The Middle East consists of 17 countries and the UAE is one of those constituent countries.

6.10 In the light of the foregoing, the Panel is satisfied that Complainant has trademark rights not only in the territories where its JUMIA mark is registered but also in the EMEA, including the UAE.

6.11 As the disputed domain name is identical to that mark, the Complaint satisfies the requirements of paragraph 6(a)(i) of the Policy.

Rights or Legitimate Interests

6.12 In the absence of a Response and on the facts made out in the Complaint, it is plain that Respondent cannot demonstrate rights to or legitimate interests in the disputed domain name whether under paragraph 6(c) of the Policy, or otherwise. Accordingly, the second element of paragraph 6(a) is satisfied.

Registered or Used in Bad Faith

6.13 The Panel finds that Complainant's case summarised in paragraph 5.A.4 above is well made out and, consequently, the Complaint meets the requirements of the third element under paragraph 6(a) of the Policy. In particular, the facts so summarised demonstrate circumstances falling within paragraphs 6(b)(iii) and (iv) of the Policy.

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 domain name <jumia.ae> be transferred to Complainant.

David Perkins
Panelist
Date: July 3, 2017

¹ In light of the substantive and procedural similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel has cited the WIPO Overview 3.0, which reflects UDRP jurisprudence, where appropriate.