WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Noon AD Holdings Ltd. v. Faizal Ahmed
Case No. DAE2021-0010
1. The Parties
The Complainant is Noon AD Holdings Ltd., of United Arab Emirates (or “UAE”), represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Faizal Ahmed, of United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <noonpay.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 August 5, 2021. On August 5, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On August 8, 2021, 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 August 10, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2021. The Respondent filed a response with the Center on August 29, 2021 to which the Center acknowledged receipt.
The Center appointed Boghossian, Nayiri as panelists in this matter on September 6, 2021. 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 was founded in 2016 in Dubai. It operates an e-commerce platform for various types of products serving the markets of the United Arab Emirates, Saudi Arabia, and Egypt. It is considered one of the largest e-commerce companies in its region. The Complainant operates an online payment platform under the name “noonpay”.
The Complainant owns many trademark registrations for the trademarks NOONPAY and NOON such as;
1. United Arab Emirates registration No. 256969 for the trademark NOONPAY registered on July 21, 2016,
2. Indian registration No. 3358279 for the trademark NOONPAY registered on September 8 2016,
3. Bahrain registration Nos. 11712 for the trademark NOONPAY and 117168 for the trademark NOON registered on August 31, 2016.
The Complainant owns the domain name <noon.com> registered in 1998 and <noonpay.co> registered in 2017.
The disputed domain name was registered by the Respondent on July 29, 2020 and does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Complainant owns various trademark registrations for the trademarks NOON and NOONPAY and has also acquired common law rights in both trademarks. Through significant investment, both trademarks enjoy fame and are associated with the Complainant. The trademark NOON is derived from the Complainant’s company name. The disputed domain name is identical to the trademark NOONPAY and confusingly similar to the trademark NOON as it incorporates these marks. The country code Top-Level Domain (“ccTLD”) “.ae” should generally be ignored when assessing confusing similarity as established by prior Uniform Domain Name Resolution Policy (“UDRP”) decisions.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized by the Complainant to use its trademarks nor is he affiliated with the Complainant. The Respondent registered the disputed domain name after the Complainant had registered its trademark and domain names. The Respondent is not commonly known by the disputed domain name. The disputed domain name does not resolve to an active website. The disputed domain name is being passively held. The Respondent offered to sell the disputed domain name to the Complainant at the price of USD 18,000.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks NOON and NOONPAY are well-known trademarks. The Complainant’s trademarks are incorporated in their entirety in the disputed domain name. Hence, the Respondent must have been aware of the Complainant’s trademarks. The disputed domain name was registered with the intent to create an impression of association with the Complainant in order to direct Internet users for commercial gain. Passive holding is also an indication of bad faith. Creating a domain name that is identical or confusingly similar to a well-known trademark can create a presumption of bad faith. Additionally, offering a domain name for sale in excess of the out-of-pocket costs indicates bad faith. The Respondent was engaged in a pattern of registering domain names that incorporate third party trademarks.
B. Respondent
The Respondent filed a response on August 29, 2021. In his response, the Respondent asserts that the words “noon” and “pay” are generic dictionary words, which the Respondent decided to use together. The Respondent registered the disputed domain name months prior to the launch of the Complainant’s business via social media channels in – according to the Respondent – October 2020. There was no way for the Respondent to know about the Complainant and its business or trademarks. The Respondent has no plans to use the disputed domain name with respect to similar or identical goods.
The Respondent contends that the disputed domain name was registered in good faith and that the Respondent has legitimate rights in respect of the disputed domain name. Passive holding is not an indication of bad faith use. The Complainant’s trademarks do not enjoy worldwide recognition.
The Respondent has been involved only in two UDRP cases and not “several”. There is no evidence that the Respondent registered the disputed domain name for the purpose of selling it. The Respondent did not solicit the Complainant. It was the Complainant who reached out to the Respondent.
The Respondent requests the Panel to make a finding that the Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”). The Complainant reached out to the Respondent to purchase the disputed domain name and when he was not happy with the price the Respondent asked, the Complainant filed the current proceedings. This is an attempt to hijack the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns trademark registrations for the trademark NOON and NOONPAY. The Panel is satisfied that the Complainant has established its ownership of the trademark NOON and NOONPAY.
The disputed domain name incorporates the Complainant’s trademarks NOON and NOONPAY in their entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy.
The ccTLD “.ae” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions1 .
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 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. Therefore, it is for the Respondent to prove that it has rights or legitimate interests.
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the current dispute, the Respondent failed to demonstrate any of the above grounds. The Respondent argues that the terms “noon” and “pay” are “generic dictionary words”. However this may be, it is noted that “Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).” (B-Boy TV Ltd v. bboytv.com c/o Whois Privacy Service/Chief Rocka LTD, formerly named BreakStation LTD, WIPO Case No. D2012-2006).
While claiming to have registered the disputed domain name for a potential business idea, there is no demonstrable preparation to use the disputed domain name in furtherance thereof put forward by the Respondent, (notably also the disputed domain name has merely been (passively) held and offered for sale by the Respondent).
On the basis of the above, the Respondent has not rebutted the Complainant’s prima facie case so as to prove any rights or legitimate interests in the disputed domain name. Consequently, the Panelist finds that the Complainant has met the requirement under the Policy. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered or is Being Used in Bad Faith
The Respondent must have been aware of the Complainant’s trademark for a variety of reasons;
1. The Complainant was founded in Dubai, in the UAE, in 2016, registered its trademarks since 2016, and registered the <noonpay.co> domain name in 2017, and was featured on “Arabnet” in 2017, while the disputed domain name was registered only in 2020.
While the Respondent claims the Complainant only launched their business in late 2020, this clearly misses the point as it is a reference to the NOONPAY offering, and ignores the fact that the NOON product launched some years earlier and became well-known (such that registration of “noonpay” clearly targeted the Complainant); the Respondent’s argument here is an entirely misguided attempt to evade common sense.
2. The Complainant’s business which operates under the trademark NOON is well known in the UAE, which is the market being targeted by the Respondent’s use of the .ae ccTLD and also where the Respondent seems to have previously resided based on the information provided by the Respondent to the Registry.
Given the above, the Panel believes that the Respondent registered the disputed domain name in order to trade off the reputation of the Complainant and its trademarks.
Additionally, the Respondent is not using the disputed domain name nor has demonstrated that it has any plans for its use. This is a case of passive holding. “Panels have consistently held that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name”.(Malayan Banking Berhad v. Beauty, Success and Truth International, WIPO Case No. D2008-1393).
Passive holding combined with the fact that the Respondent has offered the disputed domain name for sale at an exorbitant price only confirms bad faith registration and use. It has been established by prior UDRP panels that if “the Respondent registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name to the Complainant for a considerable amount of money” this is an indication of bad faith. (Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912).
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
The Respondent contends that the Complainant has filed the current proceedings in an attempt of RDNH. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
In the current dispute, not only there is no proof of reckless conduct by the Complainant but on the contrary, the Complainant’s case is legitimate, legally sound, and successful. For the foregoing reasons, the relief requested by the Respondent for a finding of RDNH is denied.
8. 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 <noonpay.ae> be transferred to the Complainant.
Boghossian, Nayiri
Sole Panelist
Date: September 17, 2021
1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases, where appropriate.