Complainant is X for convening and Managing Athletic Events of Amman, Jordan, represented by Talal Abu Ghazaleh Legal, Egypt.
Respondent is Registration Private, Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States of America (“United States”) / Ebrahim Alsaidi of Riyadh, Saudi Arabia, represented by Phil Nicolosi Law, P.C., United States.1 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 6, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2016, 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 Complainant on January 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on January 10, 2016
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 Respondent of the Complaint, and the proceedings commenced on January 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2016. The Center received informal email communications from Respondent on January 14 and February 2, 2016.
The formal Response was not filed with the Center until February 3, 2016.
Complainant sent to the Center an unsolicited supplemental filing on February 9, 2016. On February 11, 2016, Respondent sent a response to Complainant’s February 9, 2016 filing. On February 15, 2016, Complainant submitted a further unsolicited supplemental filing.
Both the late filing of the Response and the substance and admissibility of the various unsolicited supplemental filings are addressed below.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on February 11, 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
Complainant owns trademark registrations issued May 16, 2011 in Jordan for the DESERT FORCE trademark in class 41, in English and Arabic, under numbers 118233 and 118234, respectively.
The disputed domain name was registered January 17, 2010. The website at the disputed domain name displays a desert oil field scene with what appears to be a soldier of Saudi Arabia, a Saudi Arabian flag, and the Arabic words قوة الصحراء which in English mean “desert force.” 5. Parties’ Contentions A. Complainant
Complainant avers that “Desert Force” is an Arab sports league and television show that airs weekly and tours multiple Arab countries; that Complainant’s show is viewed by 50 million people weekly across the wider Pan-Arab region and worldwide; and that while its first activities employing the Desert Force brand commenced in late 2010, Complainant was founded as a company on the Jordanian companies registry on April 24, 2011.
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is identical and confusingly similar to Complainant’s trademark, which is famous worldwide, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
Complainant also alleges that Complainant offered to buy the disputed domain name, using the registrar as an intermediary. In response, Respondent offered to sell it for USD 20,000, apparently stating “I have a very serious prospect for this domain.”2 This is alleged to demonstrate Respondent’s intention to sell the disputed domain name to Complainant or its competitors for a sum in excess of Respondent’s out of pocket expenses, demonstrating Respondent’s bad faith under Policy paragraph 4(b)(i).
On the basis of these allegations, Complainant requests transfer. B. Respondent
On January 14, 2016, Respondent transmitted to the Center a brief email, stating that “I am the rightful owner of the domain . [t]he domain that was first registered in 2010 before the inception of the company that is claiming rights to my domain.”
Respondent’s second informal communication was made February 2, 2016 in response to a procedural notice by the Center. In his email, Respondent stated that he thought his response had already been filed by his attorney, that there must be some “misunderstanding,” and that owing to a ten-hour time difference, he would confirm with his United States-based attorney later in the day. The formal Response was submitted early February 3, 2016.
The following allegations are made in the formal Response filed by Respondent’s legal counsel:
1. It is conceded that the disputed domain name is identical to Complainant’s trademark.
2. Respondent has a legitimate interest in the disputed domain name:
-The “name ‘Desert Force’ is a descriptive term intended to support the loyal troops of Saudi Arabia whom refer to themselves as the ‘Force of the Desert’ . . . Respondent was born and raised in Riyadh, Saudi Arabia. Of course, the Saudi Arabian terrain is mostly desert, hence the name ‘Desert Force.’ Respondent prides himself in having cousins, uncles and grandfathers whom refer to themselves as the Force of the Desert or Desert Force. That slogan has been used to describe such men for generations, far before that phrase or any similar such phrase was used in any commercial capacity.”
-Respondent registered the disputed domain name approximately one year and four months before Complainant registered its Jordanian trademark
-Respondent already uses the disputed domain name for a landing page that depicts an image of a desert warrior, which clearly indicates Respondent’s stated goal of operating a blog to honor the “Desert Force” or “Force of the Desert” fighters.
3. As for Bad Faith, Respondent alleges that:
-Respondent “never heard of Complainant until they came to Saudi Arabia in 2015.”
-Complainant provides no evidence that Respondent uses the disputed domain name in any way that suggests any connection or relation to Complainant.
-Complainant fails to show any evidence of actual confusion or that Respondent intends to confuse or divert website visitors.
-Complainant also failed to show how Respondent registered the disputed domain name in bad faith.
-Complainant offers no evidence that its trademark even existed at the time Respondent registered the disputed domain name or that its trademark was famous. Complainant moved forward building its DESERT FORCE brand without securing the disputed domain name, and Complainant seeks to abuse the UDRP process.
-Respondent never actively promoted selling, or intended to sell, the disputed domain name; around six months ago, Respondent was approached by a domain name broker, without knowing the identity of the broker’s end customer, and Respondent’s offer to sell the disputed domain name for USD 20,000 is “immaterial.” 6. Discussion and Findings A. Preliminary Matters i. Admissibility of the Late Response
The Panel feels that it is appropriate to admit the Response, even though filed three days after the deadline. Rules, paragraph 10(a) gives UDRP panels the discretion to conduct proceedings in such manner as they deem appropriate under the Policy and the Rules. Under Rules, paragraph 10(b), the Panel must “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” Rules, paragraph 10(c) provides that the Panel must “ensure that the administrative proceeding takes place with due expedition.” In the event of a late Response, a UDRP panel’s usual course of action is to proceed to decision based only on the complaint. Rules paragraph 14(a). The Panel may exercise its discretion to “extend, in exceptional cases, a period of time fixed by [the Rules].” Rules, paragraph 10(c).
Owing to considerations discussed below, the Panel has determined to exercise its discretion to admit the Response.
First, the Panel notes that the three-day delay is de minimis; the Response was transmitted to the Panel and may be considered as a part of the initial case file. Its consideration will not prejudice Complainant or delay issuance of a final decision. E.g., Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc.,WIPO Case No. D2005-0603 (citing J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; Young Genius Software AB. v. MWD, James Vargas,WIPO Case No. D2000-0591).
Second, the Panel notes that the Response is fully consistent with Respondent’s brief email of January 14, 2016, describing the fundamental grounds of Respondent’s opposition to transfer; that the disputed domain name was registered before any indication of the trademark’s apparent contemplation or use. In this respect, the Panel feels that it would potentially contribute to reaching an improper result were the Response to be excluded for technical failure to comply with the deadline by a period of three days. See AT&T Corp. v. Randy Thompson,WIPO Case No. D2001-0830 (failure to take the response into account “would be a rather drastic step and should be undertaken with great care”); Collegetown Relocation, L.L.C. v John Mamminga, National Arbitration Forum Case No. FA 95003 (failure to take late-filed response into account would have led to a “miscarriage of justice”), cited in AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485.
The Panel will allow the late Response and take it into consideration. ii. Consideration of the Parties’ Unsolicited Supplemental Filings
The Panel has also reviewed the Parties’ respective supplemental filings in this proceeding, along with the admissibility of such unsolicited additional filings in this proceeding. In contrast to the Panel’s ruling to admit the Response, the Panel will exclude the Parties’ unsolicited supplemental filings.
Under the Rules, each Party is entitled as of right to submit only one single pleading. Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents.
The Panel is of the view that Complainant’s first unsolicited supplemental filing simply addresses points that Complainant could have anticipated would be raised in the Response. Respondent’s supplemental pleading consists of a response to Complainant’s first supplemental pleading. Finally, Complainant’s second unsolicited supplemental filing simply repeats allegations previously made on the record of the proceeding.
Neither Party has acknowledged that they are implicitly requesting that the Panel disregard the Policy’s single pleading rule. Likewise, neither Party provides any ground on which the Panel should exercise its discretion to admit the supplemental pleadings.
The Panel finds no indication that there are exceptional circumstances, new developments, arguments or evidence that were not available to Complainant before. See, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447 (discussing considerations to balance in determining whether exceptional circumstances exist sufficient to admit supplemental filings in light of the Policy’s overriding goal of efficiency), cited in Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd.,WIPO Case No. D2011-0005. Since the Panel finds there is no basis to accept Complainant’s supplemental filing, the Panel also rules that there is no need to accept Respondent’s supplemental filing, intended to rebut Complainant’s supplemental filing. It follows that Complainant’s second supplemental filing is also excluded.
Exercising its discretion and in the interests of due expedition, the Panel feels that the record that already existed prior to the various supplemental filings is adequate for purposes of this proceeding.3 B. Substantive Rules of Decision
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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. C. Identical or Confusingly Similar
Complainant contends, and Respondent concedes, that the disputed domain name is identical to Complainant’s DESERT FORCE trademark.
The Panel agrees, therefore the first element of Policy paragraph 4(a) is fulfilled. D. Rights or Legitimate Interests
The Panel finds, however, that the Complaint fails to meet the burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name, as required under Policy paragraph 4(a)(ii).
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Complaint correctly states that Complainant bears the burden to show a prima facie case that Respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. If Complainant were to show a prima facie case, the burden would shift to Respondent to produce evidence that Respondent has rights or legitimate interests. Id.
The Complaint alleges that Respondent is not affiliated with Complainant, that Complainant has not authorized the use of its trademark, that Respondent has no prior rights or legitimate interests in the disputed domain name and that, since there is no authorization, Respondent’s use cannot be bona fide. The Panel accepts the Complaint’s uncontroverted, reasonable factual averments that there is no authorization. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425.
However, Complainant appears to treat this as a proceeding governed by trademark law, while in fact it is a proceeding governed by the mandatory application of the UDRP. Examining the application of the third provision of Policy paragraph 4(c), cited above, the Panel finds that the Complaint fails to establish that Respondent is not making a legitimate noncommercial use of the disputed domain name.
The Panel notes that Complainant’s trademark is a “descriptive” or “dictionary phrase” and the possibility exists for the term “desert force” to be used in its normal sense. The Panel accepts that the meanings ascribed to the term by Respondent are reasonable.
Reviewing the evidence, the Whois records included in several annexes to the Complaint establish that the disputed domain name was registered in January 2010. The Complaint states that the brand was first used in late 2010 and does not allege that the DESERT FORCE trademark existed, or indeed was even under development at the time of registration of the disputed domain name.
Annexes to the Complaint capturing the content of Respondent’s website show no offerings, sponsored links or other indications of commercial activity. Whether or not Respondent’s description of his intention in registering the disputed domain name is credible, and notwithstanding the offer to sell, the record is devoid of any evidence from which the Panel might infer that Respondent has used or intends to use the disputed domain name for commercial purposes.
Given the fact that Respondent registered the disputed domain name well before Complainant’s public disclosure of its brand or plans to use the trademark – and the absence of any evidence of commercial use or intention for commercial use – the Panel finds that Complaint fails to meet the burden of establishing a prima facie case that Respondent lacks rights or legitimate interests under Policy paragraph 4(c).4
This shortcoming compels the Panel to deny the Complaint. Nonetheless, the Panel feels it is also appropriate briefly to address the Complaint’s allegations of bad faith. E. Registered and Used in Bad Faith
As elaborated below, the Panel finds that the Complaint also fails to establish registration and use in bad faith under the Policy.
Several grounds are alleged to support a finding of bad faith. In brief, the principal allegations are that (1) Respondent could not have been ignorant of Complainant’s famous trademark, therefore registered in bad faith; (2) Respondent’s website tarnishes the DESERT FORCE trademark, by its reference to “War, Destruction and Death,” while Complainant’s trademark is associated with the promotion of sporting competitions; (3) Respondent tried to sell the disputed domain name for a sum greater than Respondent’s out-of-pocket expenses, from which bad faith may be inferred under Policy paragraph 4(b)(i); and (4) Respondent has sought to attract users to his website through confusion, for commercial gain (bad faith under Policy paragraph 4(b)(iv)).
The Panel finds that none of these grounds has merit.
Taking each allegation in turn, the Panel finds: (1) As discussed above, there is no evidence from which the Panel could infer that the trademark was known to Respondent at the time of registration; (2) The use of the phrase “desert force” to depict a member of a military force in a desert setting is a plausible use of the words in the disputed domain name in an ordinary sense. Such use does not impermissibly “tarnish” Complainant’s trademark, under the Policy; (3) There is no evidence suggesting that Respondent knew that Complainant was the party offering to buy the disputed domain name when Complainant approached Respondent through a third-party intermediary and Respondent set a price of USD 20,000, and there is no evidence that Respondent sought to sell the disputed domain name to competitors of Complainant. Therefore bad faith is not proven under Policy paragraph 4(b)(i); and (4) again, there is no evidence upon which the Panel could infer that there was any commercial use (or intention to profit by use) of the disputed domain name, eliminating the possibility of finding bad faith under Policy paragraph 4(b)(iv). 5
In conclusion, the Complaint fails to establish bad faith as required under Policy paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Sole Panelist
Date: February 26, 2016
1 All subsequent references to “Respondent” signify the individual respondent Ebrahim Alsaidi.
2 Copies of the emails between the registrar and Respondent are annexed to the Complaint.
3 Having in any case reviewed the supplemental filings, the Panel is not persuaded that the outcome of this proceeding would be any different were the Panel to have admitted the filings into the record.
4 Consequently, the Panel needs not express any opinion on (1) whether the display on Respondent’s webpage represents protected expression (another potential basis which might support a finding that Respondent has rights or legitimate interests) and (2) whether Respondent’s alleged plan to use the website to host a blog would support the finding of a bona fide offering under the Policy.
5 The sole evidence even indirectly bearing upon potential commercial intent is the statement of Respondent in negotiations with the registrar five years after registration of the disputed domain name that "I have a very serious prospect for this domain." The Panel is unwilling to embrace the highly speculative interpretation urged by the Complainant that this “only proves that the [R]espondent[‘s] sole purpose is to eventually sell the domain; and hence, proves the bad faith of the respondent.”
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