The Complainant is Moroccan Financial Board of Casablanca, Morocco represented internally.
The Respondent is Abdullah Riahi of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names and are registered with Mesh Digital Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2011. On April 29, 2011, the Center transmitted by email to Mesh Digital Limited a request for registrar verification in connection with the disputed domain names. On May 4, 2011, Mesh Digital Limited 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 May 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2011.
The Center appointed David H. Bernstein as the sole panelist in this matter on June 16, 2011. 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.
On June 17, 2011, the Panel issued the following order:
“WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy”), makes the following observation.
In the Complaint, Complainant states that it “has registered the brand ‘Casablanca Finance City’ at the Moroccan Office of Industrial and Commercial Property (OMPIC) - See Appendix No. 4.” However, Appendix No. 4 contains what appears to be a registration for CASA FINANCE CITY, not CASABLANCA FINANCE CITY. Moreover, the registration document is in French whereas the language of this proceeding is English. And, it is not clear to the Panel (which has no familiarity with Moroccan trademark law) whether the registration is entitled to a presumption of validity under Moroccan law, whether any potentially descriptive or generic words would normally need to be disclaimed, and whether any such disclaimer has been applied to the registration in this case.
Accordingly, the Complainant is requested to submit the following information and documents to the Center, with a copy to the Respondent, by June 24, 2011:
1. A copy of the referenced trademark registration for CASABLANCA FINANCE CITY.
2. A certified translation of said trademark registration, as well as for the registration that was submitted already for CASA FINANCE CITY.
3. An explanation of whether a trademark registration in Morocco is entitled to a presumption of validity under Moroccan law, whether any potentially generic or descriptive terms in a Moroccan trademark registration need to be disclaimed, whether any disclaimer was filed, accepted or applied to the registrations at issue, and, more generally, whether, under Moroccan law, trademark rights can exist in the term CASABLANCA if it is descriptive for something from Casablanca, in the term FINANCE if that term is descriptive for the services at issue, and for the term CITY if it is descriptive for something occurring in the city of Casablanca.
If Respondent would like an opportunity to respond to these issues (and only these issues; no response will be accepted with respect to other issues in the Complaint given that Respondent failed to submit a timely Response to the Complaint), Respondent must notify the Center of its intention to submit a Response by June 27, 2011. Any such Response must thereafter be submitted to the Center, with a copy to the Complainant’s representative, on or before July 1, 2011.
The date by which the Panel will transmit its decision to the Center is hereby extended to July 8, 2011.”
The Complainant submitted supplemental materials on June 24, 2011; the Respondent has not submitted any supplemental materials. 4. Factual Background
The Complainant Moroccan Financial Board is a limited company created on July 21, 2010 for the purpose of managing and promoting the “Casablanca Finance City” project (the “Project”). The Project launched in April 2010 under the authorities of the Moroccan state, which hoped to develop the Project into “a regional and international financial center.” (as indicated in the Complaint). The Complainant in furtherance of its goal registered the trademark CASA FINANCE CITY with the Moroccan Office of Industrial and Commercial Property (the “OMPIC”) on November 26, 2010. Subsequent to the June 17 Panel order requesting a copy of the alleged registration for “Casablanca Finance City,” the OMPIC issued a registration for the mark CASABLANCA FINANCE CITY to the Complainant on June 21, 2011. Additionally, the Complainant had several domain names registered for the project on December 15, 2010, including , , and .
Abdullah Riahi, the Respondent, registered the disputed domain name on October 14, 2010 and the domain name on October 17, 2010. Currently both domain names link to a webpage showing only the registrar’s name and several links to other websites.
On February 9, 2011, the Respondent indicated in an e-mail to the Complainant his knowledge of the Project’s ambition to enhance the financial standing of Casablanca and its goal to improve the Moroccan GDP by 2%. The Respondent then acknowledged that he understood the value in the brand name “Casablanca Finance City had no intention of developing the sites he had registered and would consider a sale of the domain names to the Moroccan Financial Board on “fair commercial terms.” (Annex 10 to the Complaint). On March 2, 2011 in another e-mail to the Complainant, the Respondent specifically offered the domain name for the price of 65,000 English Pounds. 5. Parties’ Contentions A. Complainant
The Complainant has provided evidence that it registered the trademark CASA FINANCE CITY, but claimed in its Complaint that it also registered the mark CASABLANCA FINANCE CITY. After the Panel issued an order requesting evidence of the second registration, the Complainant received a registration for CASABLANCA FINANCE CITY and provided the certificate of registration to the Panel. The Complaint asserts that the domain names registered by Respondent are confusingly similar to these registered marks and will confuse the Internet visitors of those websites.
The Complainant argues that the Respondent lacks any rights or legitimate interests in the disputed domain names. The Complainant alleges that the Respondent has not utilized the domain names in any business or service and that the Respondent is not generally recognized in connection with the domain names.
Finally the Complainant asserts the Respondent registered the domain names in a bad faith attempt to extract money from the Moroccan Financial Board. Relying on the Respondent’s e-mails, the Complainant asserts the Respondent acquired the domain names for the sole purpose of reselling them to the Complainant and never had a legitimate business interest in the domain names. The Complainant highlighted the importance of the “.com” extension to the development of the Casablanca Finance City Project through the attraction of potential investors. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) states:
4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
Thus, although the Respondent has failed to respond to the Complaint against him, the burden remains with the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that the Complainant has the requisite rights in the mark. WIPO Overview 2.0, Paragraph 1.1. The Complainant has provided evidence that it registered the mark CASA FINANCE CITY with the OMPIC in November of 2010. Further, the Complainant registered the mark CASABLANCA FINANCE CITY with the OMPIC on June 21, 2011. Although the Respondent registered the disputed domain names before the registration of either mark, the date of a trademark registration is irrelevant to the question of whether Complainant has rights in the trademark for purposes of the first factor of the UDRP. 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation,WIPO Case No. D2009-0567.
With the Complainant’s ownership interest in the marks established, the remaining question is whether the disputed domain names (disregarding the gTLD .”com”) are identical or confusingly similar with the Complainant’s marks. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc./Joseph Gross,WIPO Case No. D2010-0842. The domain name is identical to the registered trademark CASA FINANCE CITY and 4(a)(i) of the Policy is thus satisfied with respect to this domain name. Similarly, the disputed domain name is identical to the mark CASABLANCA FINANCE CITY. The Panel therefore finds that the Complainant has satisfied the requirements of 4(a)(i) in establishing its ownership interest in the marks and in showing that the Respondent has registered domain names identical to those trademarks. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must make a prima facie showing that the Respondent possesses no rights or legitimate interests in the disputed domain names. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the Complainant makes such a prima facie showing, the burden of production shifts to the Respondent, though the burden of proof always remains on the Complainant. If the Respondent fails to come forward with evidence showing rights or legitimate interests, the Complainant will have sustained its burden under the second factor of the UDRP.
The Complainant has established the requisite prima facie showing that the Respondent has no rights or legitimate interests in the domain names. Despite registering both and in October of 2010, all that exists on the websites are links to other websites which seem to have been provided by the registrar. The Respondent is not associated with the Project, and has essentially admitted to his lack of a legitimate business interest in a February 9, 2011 e-mail to the Complainant where he states that he purchased the domain names after recognizing the potential positive impact of the Project on the Moroccan financial industry. The Respondent viewed the domain name registration as “an investment into a brand name in the making” and did “not have any intention of building a website” at the registered domain names. (Annex 10 to the Complaint). C. Registered and Used in Bad Faith
The Respondent’s actions indicate he acquired and utilized the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of evidence indicating bad faith on the part of a domain name registrant; paragraph 4(b)(i) in particular highlights circumstances suggesting the Respondent “acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant.” Evidence that the Respondent registered the domain names for future resale to the trademark owner itself presents “substantial evidence of the Respondent’s bad faith.” B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, supra.
The e-mail correspondence between the Respondent and Complainant indicates that Mr. Riahi never intended to build a website at or . Rather, he acquired the domain names based upon his “recognition of the value that the name may carry in the future” to the Moroccan Financial Board, which he attempted to exploit when he demanded 65,000 English Pounds for the domain names. (Annex 10 to the Complaint).
Despite these indications of bad faith, the Panel notes that Mr. Riahi registered the domain names in October of 2010, one month before the Complainant registered CASA FINANCE CITY and well before the recent registration of CASABLANCA FINANCE CITY. Domain name registration which occurs before the registration of a trademark may indicate the domain name registrant did not act in bad faith but rather in ignorance of the trademark owner’s rights. WIPO Overview 2.0, Paragraph 3.1. Here, though, Respondent’s actions are indicative of bad faith, as recognized in the exception noted in Paragraph 3.1 of the WIPO Overview 2.0, which states:
“However: In certain situations, when the 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.”
That appears to be the circumstance of this case. Although Mr. Riahi registered his domain names before the Complainant registered its trademarks, he did so based on his knowledge of the Casablanca Finance City Project and its potential impact on the finance industry in Morocco. (Annex 10 to the Complaint). Considering that Mr. Riahi never attempted to utilize the domain names for a legitimate purpose and appears to have registered the domain names for the sole purpose of selling them to the Complainant, the Panel finds he acted in bad faith. Jordan Grand Prix Limited v. Gerry Sweeney,WIPO Case No. D2000-0233 (finding bad faith by a Respondent who did not attempt to use domain name before he offered to sell the rights to the website to the Complainant). 7. 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 names and be transferred to the Complainant.
David H. Bernstein
Sole Panelist
Dated: July 8, 2011
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