WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baruti Investments Ltd v. Ayoub Salimi
Case No. DPW2015-0002
1. The Parties
The Complainant is Baruti Investments Ltd of Belize City, Belize, represented by Avraam Petros, Belize.
The Respondent is Ayoub Salimi of Inzgane, Agadir, Morocco.
2. The Domain Name and Registrar
The disputed domain name <dpstream.pw> is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2015. On January 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 3, 2015, the Registrar 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 Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (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 February 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 6, 2015.
The Respondent submitted an email communication, on March 16, 2015, in French. The Center acknowledged receipt of such communication, on the same day, indicating that it would be in the discretion of the Panel to determine whether to consider and/or admit this communication in rendering its decision, and reminding that the language of this proceeding is English. On the same day, the Complainant sent an email communication in reply to the Respondent's communication, followed by an additional email communication from the Respondent, in English.
The Center appointed Luca Barbero as the sole panelist in this matter on March 23, 2015. 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 operates a streaming Web site enabling to watch movies, TV series and other media contents at the domain name <dpstream.net>, registered on August 28, 2009.
The Complainant is the owner of the French trademark registration Nos. 4104108 for DPSTREAM (word mark), filed on June 26, 2014, in classes 9, 38 and 41, and 4104119 (figurative mark) filed on June 26, 2014, in classes 9, 38 and 41. The Complainant also owns the Community trademark application Nos. 013593991 (word mark), filed on December 19, 2014, in classes 9, 38 and 41, and 013593959 (figurative mark), filed on December 19, 2014, in classes 9, 38 and 41.
The disputed domain name <dpstream.pw> was registered on April 1, 2013 and is pointed to a streaming Web site.
5. Parties' Contentions
The Complainant asserts that its streaming web site "www.dpstream.pw" has about ten million visits per month. With reference to its activity, the Complainant highlights that it is a hosting service and that it does not host any links or players offering the possibility to download media content. The Complainant also explains that it making its best efforts to promote legal links and offers on its web site through a DMCA procedure which allows copyright owners to notify the Complainant about alleged copyright infringements.
The Complainant contends that the disputed domain name is identical to its trademark DPSTREAM as it incorporates the mark in its entirety with the mere addition of the country code Top-Level Domain ("ccTLD") ".pw", which may be disregarded for the purpose of assessing confusing similarity with the disputed domain name. The Complainant also asserts that the web site published at the disputed domain name has the same layout as the Complainant's site and provides the same services.
The Complainant points out that, when the disputed domain name was registered, on April 1, 2013, the Complainant was already known as a streaming service in France and all over the world and, therefore, the Respondent knew that he had no rights in the disputed domain name and that it would create confusion with the domain name of the Complainant.
The Complainant alleges that there is no evidence that demonstrates any good faith use of the disputed domain name and that the Respondent is using the disputed domain name in order to derive profits through advertising services. The Complainant also contends that the Respondent's use of the disputed domain name is illegal because the Respondent allows the visitors of his Web site to download media contents.
The Complainant further states that the Respondent copied the layout of the Complainant's web site and concludes that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent's web site, by creating confusion with the Complainant's trademark.
As additional circumstances of bad faith, the Complainant informs the Panel that the Respondent also registered three other similar domains names, namely <dpstream.im>, <dpstream.cn>, and <dpstream.in>, and that the Complainant attempted to reach the Respondent to request the transfer of the disputed domain name but the Respondent did not reply.
As mentioned in section 3, the Respondent did not submit a formal Response.
After the notification of the Respondent's default, however, it submitted email communications questioning the legality of the Complainant's activity through his domain name and also highlighting that the registration of the disputed domain name was made before the filing of the Complainant's trademarks.
6. Discussion and Findings
A. Preliminary issue: Respondent's informal email and complainant's Supplemental filing
The Panel has decided to accept the Respondent's email communication submitted after the notification of the Respondent's default.
Regarding the Complainant's Supplemental filing, according to the consensus view of the UDRP panelists as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2, it is in the panel's discretion whether to accept Supplemental Filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances.
As the Complainant's Supplemental filing relates to the Respondent's late email communication which this Panel has decided to consider, the Panel has also decided to accept the Complainant's Supplemental Filing.
The Panel has reviewed the Respondent's email communications and the Complainant's Supplemental Filing but has determined that they are mostly irrelevant to decide the present case, as the main arguments raised by the Respondent, on which the Complainant also commented, relate to the legitimacy of the activities pursued by the Complainant through its Web site, while the scope of the current proceeding is to determine whether, according to paragraph 15(a) of the Rules:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel also notes that the issue raised by the Respondent as to the filing date of the Complainant's trademarks, which postdates the registration of the disputed domain name, will be addressed in section 6.D.
B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a word and a figurative trademark registration for DPSTREAM valid in France, where the Respondent is based.
As mentioned in paragraph 1.1 of the WIPO Overview 2.0, if a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.
The disputed domain name <dpstream.pw> entirely reproduces the Complainant's registered trademark DPSTREAM with the mere addition of the ccTLD ".pw", a country code top level domain extension which is typically not considered for the purpose of determining identity or confusing similarity in UDRP proceedings.
The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark DPSTREAM according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, par. 2.1).
In the case at hand, it is clear that the Complainant has not authorized the Respondent's use of the trademark DPSTREAM.
There is no evidence, based on the evidence on records, that the Respondent might be commonly known by the disputed domain name or by a name corresponding to it.
The Panel also finds that, in light of the circumstances of this case, the Respondent's use of the disputed domain name to provide the same services as the Complainant under an identical domain name and using a similar layout does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In light of the above, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
As mentioned above, the filing date of the Complainant's French trademark registrations postdates the registration of the disputed domain name. However, the disputed domain name was registered more than three years after the Complainant's registration of the identical domain name <dpstream.net>.
According to paragraph 3.1 of the Wipo Overview 2.0, when a domain name is registered by a respondent before a complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. However, in certain situations, when a respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.
The Panel finds that, in light of the identity of the disputed domain name with the prior domain name registered by the Complainant, of the fact that the Respondent appears to operate in the same business as the Complainant, and of the contents published on the Web site to which the disputed domain name resolves, which are very similar to the ones available on the Complainant's web site, it is unlikely that the Respondent was not aware of the Complainant and its activity under the sign DPSTREAM at the time of the registration of the disputed domain name. Accordingly, the Panel finds the Respondent's intention at the time of registration was to take advantage of the confusion between the disputed domain name and the Complainant's then-potential rights.
As to the use of the disputed domain name, the Panel finds paragraph 4(b)(iv) applicable in this case since the Respondent's use of the disputed domain name shows that it is intentionally attempting to attract, for commercial gain, Internet users to his web site for commercial gain, by creating a likelihood of confusion with the Complainant and his trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's Web site.
In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dpstream.pw> be transferred to the Complainant.
Date: April 7, 2015