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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zalatimo Brothers for Sweets (Ahmed Zalatimo Company and partners) v. Jebril Hasan Abumarouf, Mix Zalatimo Sweets L.L.C

Case No. DAE2017-0008

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 Jebril Hasan Abumarouf, Mix Zalatimo Sweets L.L.C of Dubai, United Arab Emirates ("UAE").

2. The Domain Name and Registrar

The disputed domain name <zalatimoh.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 December 11, 2017. On the same day, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On December 12, 2017, AE Domain Administration (.aeDA) 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 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 December 20, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on January 10, 2018.

The Center appointed Nayiri Boghossian as panelists in this matter on January 17, 2018. 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 a manufacturer of sweets based in Jordan.

The Complainant has registered ZALATIMO BROTHERS FOR SWEETS as a trademark in numerous parts of the world in and outside of Jordan, including UAE trademark, registered on October 8, 2000 with registration number 34331.

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

The Respondent has registered the disputed domain name <zalatimoh.ae>. According to the evidence provided by the Complainant, the disputed domain name resolved to a website displaying a logo similar to Complainant's logo to sell sweets.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's trademark. The Complainant contends that it is the owner of the trademark ZALATIMO BROTHERS FOR SWEETS, which is well known internationally. It is also protected under the TRIPS Agreement. The disputed domain name incorporates the trademark of the Complainant in its entirety and with the same phonetics and spelling. The Complainant has been shipping its goods all over the world including the UAE since 1999. The Complainant has also obtained awards and has invested heavily in advertising. Previous panels under the Uniform Domain Name Dispute Resolution Policy have decided in favour of the Complainant against the Respondent. In addition, the Complainant obtained a judgment from the Dubai courts in his favour against the Respondent which states that the word "Zalatimoh" is confusingly similar to "Zalatimo" as the adding of the letter "h" does not differentiate between the two words.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and was not authorized by the Complainant to use its trademark. The Respondent has no prior rights or legitimate interests in the disputed domain name nor is he making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is trying to mislead the public by creating an impression of being linked to the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant's trademark as it is well known and has been used and registered in the UAE and was incorporated in its entirety in the disputed domain name. It is a sign of bad faith to attempt to attract Internet users to a domain name through confusion with another trademark. The disputed domain name is identical to the domain name of the Complainant. The Respondent uses on the website to which the disputed domain name resolves the trademark of the Complainant with the same logo, and same font and style of writing, product design, etc. The Respondent is attempting to attract Internet users for commercial gain by creating a likelihood of confusion and an impression of affiliation with the Complainant and its trademark. The Complainant presents a number of facts as indicators of bad faith. These facts include, the creation of pages on the social media by the Respondent, its manager being an ex‑employee of the Complainant, the request sent by the Respondent asking for huge amounts of money in return of stopping the use of the trade name as well as other facts and evidence including a case of actual consumer confusion as well as the judgment of Dubai courts which state the bad faith of the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns a number of trademark registrations for the trademark ZALATIMO BROTHERS FOR SWEETS in Arabic and English together with a logo. The Panel is satisfied that the Complainant has established its ownership of the trademark ZALATIMO BROTHERS FOR SWEETS.

Although the trademark ownership of the Complainant covers ZALATIMO BROTHERS FOR SWEETS as a whole and not the word "zalatimo" separately, it is the Panel's view that the word "zalatimo" is the key and distinguishing component of the Complainant's trademark as the rest of the trademark consists of descriptive terms. Furthermore, it is the family name of the Complainant.

The word "zalatimo" is part of the Complainant's trademark and is recognizable in the disputed domain name with the letter "h" added to it. The addition of the letter "h" does not in any manner eliminate confusion.

The country code Top-Level Domain ("ccTLD") ".ae" should typically be ignored when assessing confusing similarity as established in prior .ae decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 6(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 6(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 6(a)(ii) of the Policy.

C. Registered or is Being Used in Bad Faith

There are many indications that the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name and that it has registered and has been using the Complainant's trademark in bad faith. Bad faith is clear from the fact that the trademark ZALATIMO BROTHERS FOR SWEETS is well known. It is also clear from the fact that the Respondent is using it with respect to identical products, i.e. sweets, and the fact that the Respondent is imitating the logo used by the Complainant together with the way in which the trademark of the Complainant ZALATIMO BROTHERS FOR SWEETS is written in both languages Arabic and English on the website to which the disputed domain name resolves. The Respondent is clearly trying to create confusion in the mind of consumers in order to attract Internet users to its website and sell products similar to those of the Complainant.

Such conduct falls squarely within the meaning of paragraph 6(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 6(a)(iii) 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 <zalatimoh.ae> be transferred to the Complainant.

Nayiri Boghossian
Panelist
Date: January 18, 2018

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