Complainant is Dafea Limited of Leicester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Kemp Little LLP, United Kingdom.
Respondent is Owner/Operator of D of Scottsdale, Arizona, United States of America (“United States”) / Ali Alsayyar of Riyadh, Saudi Arabia. 2. The Domain Name and Registrar
The disputed domain name (the “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 26, 2016. On January 26, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On January 26, 2016, the Registrar transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 29, 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 describes itself as “a well-known provider of asset integrity management consulting and risk based integrity management planning to energy pipeline companies and their suppliers.” Complainant was established on March 25, 2014. Before that date, Complainant’s managing director, Mohamed Dafea, “traded as an independent contractor to the industry, building up a significant reputation.” According to the Complaint, “Mr. Dafea joined the Oil and Gas industry in 2004, and since then, he has worked directly with major Oil and Gas operators in high-profile projects covering risk and safety management of their assets.”
The Complaint identifies two Community Trade Marks held by Complainant, both of which were registered on September 28, 2015. One mark is the word mark DAFEA, and the other mark is DAFEA plus design. Complainant has also owned the domain name since March 11, 2014.
According to the Complaint, “Complainant has traded under or by reference to the Brand [Dafea] since 25th March, 2014, when it began offering the Services [described in the trademark registrations].”
The Domain Name was registered on May 31, 2011. The Domain Name resolves to a parking page apparently sponsored by the Registrar. There does not appear to be anything at the parking page related to Complainant or anything having to do with the oil and gas industry. Rather, the sponsored links relate to marriage records, real estate, job opportunities and motor vehicle insurance. There is also a link next to the text “Would you like to buy this domain?”
Annexed to the Complaint is an imposing list of domain names allegedly registered by Respondent. Complainant does not point to any particular patterns within this portfolio of domain names, other than to note that it is a long list. Upon its own perusal, the Panel is unable to identify a propensity on Respondent’s part of targeting trademarks.
On March 10, 2014 – one day before Complainant registered its domain name – Complainant’s managing director Mohamed Dafea sent an e-mail to Respondent expressing an interest in the Domain Name. Mr. Dafea dissembled as follows: “Would you please give me a pice [sic] for this domain? Please take into account that the domain would be for personal use, not commercial.”
Respondent sent back an e-mail asking where Mr. Dafea was from. Complainant said he was “from Egypt.”
On March 12, 2014, Respondent sent an e-mail indicating a price of USD 20,000 for the Domain Name, to which Complainant responded that day: “Huh? Brother, I have asked for a price for personal use because it is my surname. I’m not a businessman!!” On March 13, 2014, Respondent closed the discussion as follows: “Sorry, I am in my way of starting a website but that’s onather [sic] way of saying I’m not selling it unless it reach [sic] this price.”
The record reflects no further communications between the Parties between March 2014 and the filing of the Complaint in this proceeding. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required for a transfer of the Domain Name under the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights in its registered trademark DAFEA. The Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes the Complainant’s statements in this regard, and further notes that Respondent has not come forward in this proceeding or in pre-Complaint correspondence to explain its bona fides. Nevertheless, in light of the Panel’s findings under paragraph 4(a)(iii) of the Policy, set out in more detail below, the Panel determines it unnecessary to make a finding under the second element and declines to do so. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
There is nowhere in the record any evidence that DAFEA was used as a source identifier for goods or services – i.e., as a trademark – at any time prior to 2014, which is three years after the Domain Name was registered. Complainant admits that it did not form its business until March 2014. Prior to that formation, the only activity to which Complainant points is the fact that Mr. Dafea provided services similar to those now provided by Complainant. Annexed to the Complaint are a few speeches or power-point presentations evidently prepared by Mr. Dafea. However, all of these presentations are dated 2012 or later – again, after the Domain Name was registered. Moreover, while Mr. Dafea is identified in these presentations, he is typically identified as a representative of some other company.
In short, there is no evidence that the DAFEA trademark existed in any manner prior to 2014, and hence the Panel cannot discern any way that Respondent had the nonexistent Complainant or the nonexistent DAFEA trademark in mind back in 2011 when he registered the Domain Name.
Further, the fact that Respondent apparently holds registrations for more than 2,000 domain names does not furnish a basis on which to grant Complainant the remedy it requests in this proceeding. Very little can be discerned from the list of domain names registered by Respondent. The fact that one of the domain names chances to be identical to someone’s surname, and that person later decides to use his surname as a trademark, cannot be the occasion for a bad faith finding under the Policy.
Complainant has not established Policy paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: March 1, 2016
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