Complainant is Al Arabiya News Channel FZ - LLC of Dubai, United Arab Emirates, represented by Al Tamimi & Company, United Arab Emirates.
Respondent is ALCLICK of Dubai, United Arab Emirates, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2013. On January 14, 2013, the Center transmitted by email to D, LLC a request for registrar verification in connection with the domain name at issue. On January 15, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on January 21, 2013.
After some issues with Complainant’s Annexes, the Center verified that the Complaint, together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on January 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2013. The Response was filed with the Center on February 19, 2013.
The Center appointed Lynda Zadra-Symes, Gordon Harris and Warwick Smith as the three panelists in this matter on March 6, 2013. 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
Complainant is a 24/7 free-to-air news and current affairs satellite channel.
Complainant claims to have registered figurative trademarks containing the words “AL ARABIYA” in Arabic text, in numerous countries, primarily covering classes 9, 16, 35 and 41. Complainant did not provide copies of the registration certificates with the Complaint.
Complainant has owned and operated a website at the domain name since, at the earliest, 2003.
Respondent provides digital content from and online marketing services to the “Alarabiya region.”
The disputed domain name was first registered in February 1999. Respondent purchased in March 2007. Respondent claims to have started using the disputed domain name in May 2007. Respondent notes that the official purchase transaction for the disputed domain name did not close until February 2009 because of the “[g]lobal [f]inancial crisis.”
Respondent has registered rights to the word mark ALARABIYA in Slovenia in classes 9, 35 and 41, dating from November 2009. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark registrations for the words AL ARABIYA in Arabic text; Complainant contends that Respondent’s use of “alarabiya” in the disputed domain name is confusingly similar to Complainant’s extensive portfolio of AL ARABIYA trademarks; that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and used the disputed domain name in bad faith. B. Respondent
Respondent contends that it has been commonly known as “ALARABIYA CLICK” since prior to the existence of Complainant’s organization, and first used ALARABIYA in 2002, that it has been operating its website for six years and has been using the mark AL ARABIYA in connection with legitimate online marketing and digital content, including finance and economic news services, in the Arab region. Respondent further claims that it legally purchased the disputed domain name when it became available for purchase, has never demanded money from Complainant and filed own trademark registration for AL ARABIYA in Slovenia, which has been registered with effect from 2009.
Respondent further claims that Complainant has no exclusive rights in the term ALARABIYA for various reasons, including that it is a geographical identifier and that it is a millennia old non-coined, non-unique, public dictionary definition.
Respondent also contends that the Complaint has been brought in an attempt at Reverse Domain Name Hijacking. 6. Discussion and Findings
The Panel has reviewed the Complaint and the documents annexed to the Complaint and the Response and the documents annexed to the Response.
Complainant must “prove” each of following elements of the Policy, which are set out in paragraph 4(a) of the Policy as follows:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 4 of the Policy, it is expressly stated that the burden of proof in demonstrating each of the three elements is with the complainant. A. Identical or Confusingly Similar
Complainant’s trademark registrations for the words “AL ARABIYA” in Arabic in numerous countries may provide Complainant with rights in the equivalent English expression “AL ARABIYA”. It is not disputed that “Al Arabiya” is one of several possible transliterations into English of the stylized Arabic expression which forms part of Complainant’s registered trademarks. However the Panel is concerned that, while Complainant provided a list of these registrations, it did not include any registration certificates.
Complainant also submits that the AL ARABIYA trademark has gained distinctiveness in connection with Complainant based on long and extensive use of the mark in Arabic and non-Arabic text since Complainant’s launch in 2003. Complainant cites legal systems such as the United States of America, United Kingdom, Australia and other countries of the Commonwealth as providing common law rights, but provides only minimal evidence of use of the mark in those countries.
Notwithstanding the deficiencies in the evidence put forward by Complainant under this heading, on the basis that “AL ARABIYA” is an acknowledged transliteration of the Arabic text in Complainant’s registrations, and Respondent’s acknowledgement of the registration of Complainant’s mark in the European Union, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark, applying the rationale in Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. B. Rights or Legitimate Interests
Complainant claims that Respondent does not have any connection with Complainant, and Respondent has not been licensed or authorized by Complainant to use the AL ARABIYA trademark. Complainant further claims that Respondent has no legitimate reason for using the AL ARABIYA mark because it is “inconceivable” that Respondent could have plausibly used the mark without knowledge of Complainant’s celebrity acquired over the years since 2003. In addition, Complainant claims that Respondent is using the domain name for the non bona fide purpose of diverting Internet users to Respondent’s own website at the expense of Complainant, and for the purpose of Respondent’s pecuniary gain.
Respondent claims that it has been commonly known as “ALARABIYA CLICK” prior to Complainant’s organization, and first used ALARABIYA in 2002. Respondent claims it has been operating its website for six years and has been using the mark AL ARABIYA in connection with legitimate online marketing and digital content, including finance and economic news services, in the Arab region. Respondent further claims that it legally purchased the disputed domain name when it became available for purchase, that Respondent has never demanded money from Complainant, and that Respondent’s site is not a “pay per click” site.
Respondent further claims that Complainant has no exclusive rights in the term ALARABIYA for various reasons, including that it is a geographical identifier and that it is a millennia old non-coined, non-unique, public dictionary definition. However, Respondent then cites its own trademark registration in Slovenia for the same term, which has been registered with effect from 2009. As the UDRP panel stated in BECA Inc. v. CanAm Health Source, Inc.WIPO Case No. D2004-0298:
“When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.”
The Panel is troubled by Respondent’s claim to a trademark registration in Slovenia, as Respondent provides no evidence of its business being located in Slovenia. Respondent claims that it has a software team in that country, but fails to support its contention with any documentary evidence. Respondent does not submit any other evidence of a European business location. However, this is not a case where a respondent has registered a trademark corresponding to a disputed domain name, (in a jurisdiction with which the respondent has no apparent connection) only on receipt of a cease and desist letter, or otherwise “at the last minute”. In this case, Respondent’s Slovenian mark was filed more than three years before the Complaint was filed. In those circumstances, the Panel considers that there is no evidence in the record that is sufficient to lead the Panel to conclude that Respondent’s Slovenian trademark registration should be construed as a device to bolster its registration of the disputed domain name and, accordingly, can be disregarded for the purposes of paragraph 4(a)(ii) of the Policy.
While the content of Respondent’s website appears suspiciously thin, the Panel is troubled by the minimal level of proof of Complainant’s AL ARABIYA trademarks, and the lack of evidence explaining why Complainant did not attempt to purchase the disputed domain name on the several occasions when it became publicly available for sale since 1999. Complainant’s failure to provide adequate proof of its trademarks (the only sufficient proof, that of the Community Trademark, was provided by Respondent), in particular, might be thought to lend some weight to Respondent’s argument that, at least in the region where both parties operate, “Al Arabiya” would be understood by Arabic speakers who also read English as a purely descriptive, or geographic, expression, which Respondent and others could freely use. Complainant contends that it became aware of the disputed domain name in 2012. But this contention defies belief in view of the public record of the existence of the disputed domain name since 1999, and Complainant’s registration of several other “alarabiya” domain names.
Respondent’s knowledge and intention at the time it acquired the disputed domain name is highly relevant, but knowledge of Complainant’s rights does not, in itself, preclude Respondent from having a right or legitimate interest in the disputed domain name.
The Panel finds that Complainant has failed to satisfy its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As the basis for its bad faith allegations, Complainant claims that Respondent “had likely knowledge” of Complainant’s rights when it acquired the disputed domain name and that there is no plausible reason for Respondent to choose the disputed domain name other than with the intent to confuse Internet users for commercial gain.
Respondent contends that its use of the disputed domain name since 2007 and the word ALARABIYA since 2002 predates all of Complainant’s registered marks.
The domain name was on sale on the open market for approximately six years before it was purchased by Respondent for the considerable sum of USD 40,000. Respondent contends that it is not competing with Complainant, has demanded no money from Complainant, and therefore, there can be no bad faith.
Particularly having regard to the matters discussed under the heading “Rights or Legitimate Interests” above, the Panel finds that Complainant has failed to satisfy its burden of proving bad faith registration and use of the disputed domain name.
The Panel notes that Respondent’s actions in choosing the disputed domain name appear, on the limited evidence placed before the Panel, to be at least open to question. However, the Panel is of the view that the UDRP is not the appropriate forum in which that question should be resolved. A national court, with its knowledge of local trademark law and the power to call and cross-examine witnesses, would be a more suitable forum for resolving disputes such as this one. D. Reverse Domain Name Hijacking
While the Complaint has failed, the Panel does not believe this is a case for a finding of Reverse Domain Name Hijacking, or that the Complaint has otherwise been brought in bad faith. The Panel has found that the disputed domain name is confusingly similar to a Community Trademark in which Complainant has rights, and Respondent must have appreciated when it registered the disputed domain name that it would likely attract to its website a number of Internet users who were looking for Complainant’s website. The principal issues in the case have been whether Respondent nevertheless had a right or legitimate interest in the disputed domain name, and whether it has been acting in bad faith. Ultimately it was for Complainant to prove that no right or legitimate interest existed, and that Respondent has been acting in bad faith. On the evidence produced in this proceeding, Complainant has failed, by a fairly fine margin, to discharge that onus. 7. Decision
For the foregoing reasons, the Complaint is denied.
Lynda J. Zadra-Symes
Presiding Panelist
Gordon Harris
Panelist
Warwick Smith
Panelist
Date: March 29, 2013
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