The Complainant is The Financial Times Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Berwin Leighton Paisner LLP, United Kingdom.
The Respondents are Domain Privacy Service of Provo, Utah, United States of America; and Rashed Ahmed of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with FastDomain, Inc. (the “Registar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 20, 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. The Center sent an email communication to the Complainant on June 28, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 2, 2013.
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” 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 July 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2013.
The Center appointed Gabriela Kennedy, Dawn Osborne and Hoda T. Barakat as panelists in this matter on August 19, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted their respective 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 is a business news and information provider based in London, the United Kingdom, and has been publishing news and information under the mark FINANCIAL TIMES (also known by its abbreviation “FT”) since the 1800s (“Financial Times Newspaper”).
The Complainant owns the trademarks FT and FINANCIAL TIMES in various countries worldwide, including Bahrain, the European Union, Qatar, United Arab Emirates, and the United Kingdom.
The Complainant currently operates 19 printing and publishing centres for its Financial Times Newspaper across the United Kingdom, Belgium, Ireland, Germany, Sweden, Italy, Spain, the United States of America, Hong Kong, China, the Republic of Korea, the United Arab Emirates, Australia, Japan and South Africa. In September 2013, the total global print circulation of the Financial Times Newspaper was 287,895, two-thirds of which were outside the United Kingdom.
The Complainant operates the domain name , which resolves to a website that provides a source of news, comment, data, analysis and tools for the global business community. The domain name was first registered in 1995 and displays the Complainant's registered trademarks FT and/or FINANCIAL TIMES. The domain name has over 328,000 paying digital subscribers.
The Respondent, as disclosed by the Registrar, is Rashed Ahmed. The Respondent registered the Disputed Domain Name through a proxy service called Domain Privacy Service on October 11, 2012.
The website that the Disputed Domain Name resolves to is a holding page that refers to news articles concerning sports and Africa, which direct consumers to third party news websites. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
(a) The Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark or service mark, in which the Complainant has rights:
The Disputed Domain Name wholly incorporates the Complainant's registered FT trade mark, and differs only from the Complainant's own domain name by the insertion of the geographical qualifier “africa” after the words “ft”. The Complainant asserts that the addition of a geographic term, such as “africa”, does not detract from the fact that the domain name is functionally identical and confusingly similar to the Complainant's FT trade mark.
(b) The Respondent has no rights or legitimate interests in respect of the domain name:
The Complainant has not granted a licence to or authorised the use by the Respondent of, the Complainant's FT mark. There is also no evidence that the Respondent is using, or preparing to use, the Disputed Domain Name for a bona fide offering of goods or services. Further, there is no evidence that the Respondent is commonly known by the Disputed Domain Name or has any rights in the FT mark. Lastly, the registration of the Complainant's registered mark FT precedes the registration of the Disputed Domain Name.
(c) The Disputed Domain Name was registered and is being used in bad faith:
The Respondent registered the Disputed Domain Name in bad faith solely to benefit from the Complainant's goodwill and to attract customers to any connected website.
The Complainant made substantial efforts to try and identify and contact the Respondent, who registered the Disputed Domain Name via a proxy service provider. Despite its efforts, the Complainant was unable to ascertain the name or contact details of the Respondent until after these proceedings had been commenced. As such, the Complainant contends that the use of a proxy service provider together with the above, is evidence that the Disputed Domain Name was registered in bad faith, solely to benefit from the Complainant's goodwill.
In addition, the Disputed Domain Name only differs from the Complainant's domain name by the insertion of the word “africa”. The Respondent therefore intentionally registered the Disputed Domain Name to give the impression to the average consumer that the website in which the Disputed Domain Name resolves to is a website operated or affiliated with the Complainant. Users who inadvertently access the Disputed Domain Name's website may believe that it is associated with the Complainant's activities in or around Africa, as the Complainant's Financial Times Newspaper is read and published in the African region. The registration of the Disputed Domain Name is an attempt to prevent the Complainant from owning it.
Lastly, the Respondent's bad faith registration is evidenced by the fact that the Respondent registered the Disputed Domain Name many years after the Complainant's adoption and first use of its mark FT. Considering the Complainant's international long-standing reputation, the Respondent would have been aware of the Complainant's rights in the FT mark at the date of registration of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is 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 interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the FT mark based on its trade mark registrations all over the world, including in Bahrain, the European Union, Qatar, United Arab Emirates, and the United Kingdom.
The Disputed Domain Name incorporates the Complainant's FT trade mark in its entirety. The only difference between the Disputed Domain Name and the Complainant's FT mark is the inclusion of the word “africa” as a suffix. It is well established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only deviation from this is the inclusion of a geographic indicator as a prefix or a suffix, such prefix or suffix does not typically negate the confusing similarity between the disputed domain name and the mark (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768). In this case, “ft” is the distinctive and prominent component of the Disputed Domain Name and the addition of the word “africa” does nothing to distinguish it from the Complainant's FT trade mark.
Further, it is a well-established rule that in making an enquiry as to whether a mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, should be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark in which it has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s FT mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of the FT trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The Complainant has been using the FT mark in relation to the provision of news and information, including in Africa and the Middle East, prior to the registration of the Disputed Domain Name. The website that the Disputed Domain Name resolves to is a holding page that refers and provides links to news articles concerning sports and Africa, which direct consumers to third party news websites, presumably with a view of generating incidental revenue from advertising referrals in the future. The Panel therefore finds on balance, without the benefit of any explanation from the Respondent, that the Respondent has not been using the Disputed Domain Name in connection with a bona fide offering of goods or services, and is not making fair use of the Disputed Domain Name without the intent of commercial gain to misleadingly divert consumers to the Respondent's website.
The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts the Complainant's contention that the FT trade mark is a well-known mark in multiple countries. However, the Panel notes that the FT trade mark may not be as famous in the Middle East, where the Respondent appears to be based, as in other countries. In particular, the Panel notes that the Complainant's trade mark registrations for FT in the United Arab Emirates are relatively recent. As the Respondent did not submit a Response to refute any of the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The Panel accepts that the Respondent likely knew of the Complainant’s FT trade mark based on the following:
(a) the Respondent registered the Disputed Domain Name on October 11, 2012, more than twenty-eight years after the Complainant had obtained its first registration for the FT trade mark;
(b) the Complaint has been using its FT trade mark with regard to the provision of news and information, and the website that the Disputed Domain Name resolves to includes references and links to news articles on other websites, which may compete with the Complainant, presumably with a view to generating incidental revenue from advertising referrals in the future; and
(c) the Complaint's FT trade mark and domain name are confusingly similar to the Disputed Domain Name, with the only difference being the word “africa”, which is added as a suffix to the "ft" brand in the Disputed Domain Name and acts as a geographic indicator.
Based on the above, the Panel infers that the Respondent registered the Disputed Domain Name with the intention of trading on the reputation of the Complainant's FT trade mark to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's FT mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. This constitutes evidence that the Disputed Domain Name was registered and is being used in bad faith.
Lastly, the Complainant asserts that bad faith exists because the Respondent used a privacy or proxy registration service. It is well established that whilst use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute an indication bad faith.
In this case, the Respondent used a proxy service to register the Disputed Domain Name, and despite the efforts of the Complainant to try and identify and contact the Respondent prior to the initiation of these proceedings, the Complainant was unable to ascertain the name or contact details of the Respondent until after these proceedings had been commenced. This was so even after the Complainant hired an investigator and a domain broker to contact the Respondent via the proxy service. In addition, the Respondent refused to accept delivery of a hard copy of the Complaint in these proceedings. In the Panel’s view, this suggests that the Respondent's use of a proxy service in this instance was motivated by an intention to make it difficult to identify the registrant, or for a person to assess the merits of any legal claim or Policy complaint, and to contact the registrant, which is an indication of bad faith (see Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743). The Respondent has submitted no Response to explain the difficulties faced by the Complainant in trying to identify and contact the Respondent and/or his refusal to accept delivery of the Complaint. Consequently, the Panel finds that the Respondent’s use of a proxy service in addition to the above is enough to amount to bad faith.
The Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 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 Name be transferred to the Complainant.
Gabriela Kennedy
Presiding Panelist
Dawn Osborne
Panelist
Hoda T. Barakat
Panelist
Date: September 2, 2013
Full & Egal Universal Law Academy