The Complainant is Gulf DTH LDC of Cayman Islands, the overseas territories of the United Kingdom of England and Northern Ireland, represented by Clyde & Co., United Arab Emirates.
The Respondent is Mohamed Abdelhady of Doha, Qatar. 2. The Domain Name and Registrar
The disputed domain name is registered with L Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 18, 2015. On November 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 15, 2015.
The Center appointed Mohamed-Hossam Loutfi as the sole panelist in this matter on January 12, 2016. 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, through its predecessors, has been in business of pay-television network called Orbit Showtime Network prior to 2009. In 2009, the Complainant's pay-television network has been abbreviated to OSN. Since 2009 the Complainant registered and owns over 200 trade marks in a portfolio showing a large number of pending and registered trademarks for OSN and OSN stylized trade mark:
In the Middle East and North Africa ("MENA") region, the Complainant offers pay-television network services to public under the registered trademark OSN in three Arab countries as follows:
OSN trademarks for United Arab Emirates ("UAE") No 218235 registered on December 31, 2014 for services in Class No. 35; No 105271 registered on June 30,2010 in Class 38; No 105272 registered on June 30, 2010 for services in Class 41; No 130812 registered on February 1, 2011 for services in Class 38; and No 105271 registered on February 1, 2011 for services in Class 41;
OSN trademark for Egypt No 243356 registered on June 10, 2013 for services in Class 41; No 243357 registered on June 10, 2013 for services in Class 38; and No 243358 registered on June 10, 2013 for services in Class 41.
OSN trademark for Qatar No 62957 registered on June 10, 2013 for services in Class 41; and No 62958 registered on June 10, 2013 for services in Class 38. 5. Parties' Contentions A. The Complainant
The Complainant contends that the disputed domain name is confusingly similar to its registered trademarks OSN.
The Complainant states that there is no relationship between it and the Respondent and that it has not authorized the Respondent to use its trademark. The Complainant adds that the Respondent could not make legitimate use of the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name or any corresponding names.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Complainant requests a decision transferring the disputed domain name to the Complainant based on fulfilment of the three required elements pursuant to the Uniform Domain Name Dispute Resolution Policy i.e. Identical or Confusingly use of a distinctive name, lack of legitimate Interest from the Respondent on this name and has registered and used the disputed domain name in Bad Faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. Further to the Center's notification of panel appointment, the Respondent sent an email noting "I have no idea about this case, if you wanna remove the domain osnnews ( online search network news ) i will do because i dont care about this domain". 6. Discussion and Findings
The Panel's jurisdiction is limited to the determination whether the Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, Paragraph 4(a).
In view of the Respondent's default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that in assessing the degree of similarity between the Complainant's trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. "The issue of degree of similarity between the Complainant's trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking to purchase or download information about the Complainant's products." See, Inter IKEA Systems B.V. v. Smith Patricia,WIPO Case No. D2014-0141.
The disputed domain name includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark OSN, there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's trademark.
The Panel is confident that the most prominent and distinctive part of the disputed domain name is the word "OSN" which is identical to the Complainant's registered trademarks OSN.
Accordingly, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
UDRP decisions are confirming that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. (See, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
The Panel notes that the Complainant's allegations make out a prima facie case of the Respondent's lack of rights or legitimate interests in the disputed domain name. See, LEGO Juris A/S v. Domain Park Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138. As there is no license or authorization of any kind has been provided by the Complainant to the Respondent to use any of its trademarks or to apply for or use any domain name incorporating those marks, it is clear that no bona fide or legitimate use of the disputed domain name could be claimed by the Respondent. See, Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610.
Accordingly, it is obvious that no evidence has been presented that the Respondent is commonly known by the disputed domain name or has been making any legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue or to derive advantage that amounts to be non-legitimate use and does not confer any rights in favor of the Respondent. See, DivX, LLC v. PrivacyP / Gerente de Dominia, CSRUS Enterprises,WIPO Case No. D2011-0600 and Accor v. Eren Atesmen,WIPO Case No. D2009-0701.
Accordingly, the Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith
It is crystal clear in the Panel's assessment that the Respondent has registered and used the disputed domain name in bad faith with prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. As indicated in a previous UDRP decision "[i]n this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders […] the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name". See Inter IKEA Systems B.V. v. Smith Patricia, supra.
Accordingly, the bad faith of the Respondent is obvious based on three elements as follows:
The Complainant's OSN trademark has gained certain fame amongst general public and has gained the public's confidence. This fame and confidence are established through years of efforts by the Complainant and the Respondent's reason to register the disputed domain name including the Complainant's trademark and adding the descriptive word "news" was to benefit from the Complainant's fame. See, Reveille LLC v. Theodore Lazier / Registrant c/o / Whois Privacy Service,WIPO Case No. D2011-0601.
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 disputed domain name and the Complainant's rights. Thus, bad faith registration can be found. See, ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),WIPO Case No. D2003-0320; and San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc, WIPO Case No. D2009-1545.
Concerning the bad faith use, the disputed domain name was resolving to a website displaying news articles in Arabic which is in competition with the Complainant's business.
In addition, the Respondent did not respond to the Complaint. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name. See, Osram GmbH v. Azat Seitmuhamedov,WIPO Case No. D2015-1192; Inter IKEA Systems B.V. v. Smith Patricia, supra; Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair,WIPO Case No. D2015-1001; CNH America LLC v. Steve Brim,WIPO Case No. D2015-1188; and Zions First National Bank v. Xu Shuaiwei / Domain Administrator, See PrivacyG,WIPO Case No. D2015-1177. 7. Decision
For all 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.
Mohamed-Hossam Loutfi
Sole Panelist
Date: January 26, 2016
Full & Egal Universal Law Academy