WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ooredoo IP LLC and IP Holdings Limited v. Hamidreza Asadi Aghbolaghi

Case No. DIR2021-0008

1. The Parties

Complainants are Ooredoo IP LLC, Qatar, and IP Holdings Limited, Cayman Islands, United Kingdom, represented by Talal Abu Ghazaleh Legal, Egypt.

Respondent is Hamidreza Asadi Aghbolaghi, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <ooredoo.ir> (the “Domain Name”) is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On April 10, 2021, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (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 26, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2021. On June 18, 2021, the Center notified Respondent’s default.

The Center appointed Marina Perraki as the sole panelist in this matter on June 30, 2021. 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. Procedural issues – Consolidation of Multiple Complainants

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).¹

The Panel notes that per the Complaint both Complainants are part of the same group of companies, both are wholly-owned subsidiaries of Ooredoo QPSC and both hold trademark registrations for OOREDOO.

Complainants have established that they both have an interest in the Domain Name and with that common grievance against Respondent and it would be equitable and procedurally efficient to permit the consolidation of Complainants. The Panel accepts Complainants jointly filing the Complaint in this matter (N.M Rothschild & Sons Limited and Banque Martin Maurel v. Xiamen PrivacyProtection Service Co. Ltd. / Yang hongjuan, WIPO Case No. D2016-2508; Jacqueline Riu and Société Riu Aublet et Compagnie v. Olivia Marimelado, WIPO Case No. D2010-0170).

5. Factual Background

Complainants (henceforth “Complainants” or “Complainant”) are wholly owned subsidiaries of Ooredoo QPSC (formerly Qtel), an international telecommunications company headquartered in Doha, Qatar formed in 1987 initially as a telephone exchange company and which has grown to become the largest communications operator in Qatar offering new technologies including mobile, broadband, digital and fiber services, with over 114 million customers.

Complainant owns trademark registrations for OOREDOO (figurative) in various countries, including, per the Complaint:

- Bahrain trademark registrations nos. 097734, for services in international class 37, registered on October 21, 2021 and 097735 for services in international class 38, registered on the same day;

- Egypt trademark registration no. 288987, registered on February 7, 2016, for services in international class 35; and

- United Kingdom trademark registration no. UK00003017874, filed on August 13, 2013 and registered on December 27, 2013 for goods and services in international classes 7, 9, 16, 35, 36, 37, 38 and 41.

Per the Complaint, Complainant owns the domain name <ooredoo.com>, registered on October 18, 2009 and the domain names <ooredoo.qa> and <ooredoo.om>.

The Domain Name was initially registered by Complainant on March 3, 2011, until Complainant inadvertently failed to renew its registration and allowed it to expire on May 2, 2017. The Domain Name was then registered by Respondent on the following day namely on May 3, 2017 and resolves to an inactive website.

6. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

7. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements that Complainant must satisfy with respect to the Domain Name:

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

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is confusingly similar to the OOREDOO trademark of Complainant.

The Domain Name incorporates the textual element of the OOREDOO trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The country code Top-Level Domain (“ccTLD”) “.ir” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name resolves to an inactive page.

In addition, the Domain Name consists entirely of Complainant’s mark and thus carries a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because the OOREDOO mark had been widely used and registered by Complainant before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

This also in view of the fact that Respondent registered the Domain Name one day after Complainant inadvertently allowed it to expire.

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of OOREDOO (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

The non-use of a domain name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ooredoo.ir> be transferred to Complainant Ooredoo IP LLC.

Marina Perraki
Sole Panelist
Date: July 14, 2021

¹ The Panel follows prior decisions under the irDRP and, given the similarities between the irDRP and UDRP, finds it appropriate to refer to UDRP jurisprudence, including reference to the WIPO Overview 3.0. See Inter IKEA Systems BV (IISBV) v. Mohammadreza Mohammadian, WIPO Case No. DIR2018-0003.