The Complainant is Zalatimo Brothers for Sweets (Ahmed Zalatimo Company and partners) of Amman, Jordan, represented by Talal Abu Ghazaleh for Intellectual Property, Egypt.
The Respondent is Jebril Abu Marouf, Arabic Sweet of Dubai, United Arab Emirates ("UAE"). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2016. On March 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2016, 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 March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 22, 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 Zalatimo Brothers for Sweets is a company that produces sweets and markets them in different countries in the Middle East. The company was founded in 1860 by Mohammad Zalatimo and is now owned by his descendants.
The Complainant has the following trademark registrations for "Zalatimo Brothers for Sweets" (the "ZALATIMO trademark"):
- the combined trademark ZALATIMO BROTHERS FOR SWEETS with registration No. 25933, registered on October 8, 2000 in the UAE for services in International Class 43;
- the combined trademark ZALATIMO BROTHERS FOR SWEETS with registration No. 74988, registered on July 22, 2007 in Algeria for goods and services in International Classes 30 and 43;
- the combined trademark ZALATIMO BROTHERS FOR SWEETS with registration No. 005546759, registered on December 10, 2007 as a EU trademark for goods and services in International Classes 30 and 43;
- the combined trademark ZALATIMO BROTHERS FOR SWEETS with registration No. 2007 57372, registered on September 12, 2008 in Turkey for goods and services in International Classes 30 and 43; and
- the combined trademark ZALATIMO BROTHERS FOR SWEETS with registration No. 132950, registered on March 2, 2014 in Jordan for goods in International Class 30.
The Complainant has registered the domain name since June 8, 1998.
The disputed domain name was registered on May 17, 2015. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name incorporates the ZALATIMO trademark with the addition of the letter "h". This addition does not sufficiently differentiate the disputed domain name from the ZALATIMO trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant, and the Complainant has not authorized the Respondent to use the ZALATIMO trademark, or to seek the registration of any domain name incorporating it. The Complainant started its business in 1860, and its registrations of the ZALATIMO trademark preceded the Respondent's registration of the disputed domain name. The Respondent has not registered the disputed domain name in connection with a bona fide intent, but rather is trying to take unfair advantage of the ZALATIMO trademark and to mislead consumers.
The Complainant further contends that the Respondent is well aware of the ZALATIMO trademark which was registered in 2000 in the UAE, where the Respondent is located. The Respondent has established a company in the UAE in 2014 with the same activity as that of the Complainant. The Respondent's company sells the same products as the Complainant, and uses a similar logo, trademark, trade name, colors, font and style of writing. The Complainant filed a lawsuit against the Respondent with No.1886/2014 before the Dubai Courts. The court issued a judgment in this case by which it ordered the Respondent to refrain from using the ZALATIMO trademark as its trade name and as a sign in respect of the products and services offered by it. The judgment was confirmed by the Court of Appeal in Dubai.
The Complainant contends that the disputed domain name has been registered and used in bad faith. The Respondent was well aware of the ZALATIMO trademark when it registered the disputed domain name. The Respondent uses the disputed domain name in connection with a website that offers the same products as those of the Complainant. The website at the disputed domain name contains a logo that is very similar to the logo of the Complainant. Thus, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the ZALATIMO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" In the event of a default, under the Rules, paragraph (14)(b): "[…] the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."
In this administrative proceeding, the Respondent's default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its Decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence sufficient to establish its rights in the ZALATIMO trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top Level Domain section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".com" part of the disputed domain name.
Therefore, the relevant part of the disputed domain name that has to be analyzed is its "zalatimoh" section. This section is confusingly similar to the distinctive and dominating "Zalatimo" element of the ZALATIMO trademark, as the only difference between the two is the letter "h" at the end of the "zalatimoh" element of the disputed domain name. This difference is of little significance, as it is of only one letter placed at the end which does not change the pronunciation of the whole section.
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the ZALATIMO trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated with the Complainant, and the Complainant has not authorized the Respondent to use the ZALATIMO trademark, or to seek the registration of any domain name incorporating it. The registration of the ZALATIMO trademark preceded the Respondent's registration of the disputed domain name. The Respondent has not registered the disputed domain name in connection with a bona fide intent, but rather is trying to take unfair advantage of the ZALATIMO trademark and to mislead consumers. The Complainant further contends that the Dubai Courts have issued a judgment by which they have ordered the Respondent to refrain from using the ZALATIMO trademark as its trade name and as a sign in respect of the products and services offered by it. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the case file that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests. The disputed domain name incorporates the ZALATIMO trademark, and the website associated to it displays a logo similar to that of the Complainant and advertises products that compete with those of the Complainant. Thus, the Respondent exploits the popularity of the Complainant's product and trademark to attract the attention of Internet users to its website and attempts to sell to them competitive products. In the Panel's view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent in the disputed domain name.
Taking all the above into account, the Panel finds that the Complainant's prima facie case of the Respondent's lack of rights or legitimate interests in the disputed domain name has not been rebutted.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
In this proceeding, the Complainant has established that the disputed domain name was registered with knowledge of the Complainant's rights in the ZALATIMO trademark in an attempt to trade off of the reputation and goodwill of the same trademark. The disputed domain name incorporates the ZALATIMO trademark, while the website associated to it advertises products that compete with those of the Complainant and displays a logo similar to the logo of the Complainant but with the inclusion of the name of the defendant company in the Dubai proceedings. The disputed domain name was registered after the Dubai Court issued its judgment ordering that company to stop using the ZALATIMO trademark. In the Panel's view, the content of the website is a strong indication that the defendant company in the Dubai proceedings is related to the Respondent. All this satisfies the Panel that the Respondent was well aware of the ZALATIMO trademark and its attractiveness when it registered the disputed domain name, and that its decision to register it was made in view of the popularity of the trademark. This conclusion supports a finding that the Respondent registered the disputed domain names in bad faith.
The content of the website associated to the disputed domain name supports a finding that, by using the disputed domain name, the Respondent has intentionally exploited the goodwill of the Complainant's ZALATIMO trademark in an attempt to attract, for commercial gain and by means of confusion, Internet users to the website at the disputed domain name and to offer to them products that compete with the Complainant's products. In the Panel's view, this conduct supports a finding that the disputed domain name is being used in bad faith under paragraph 4(b)(iv) of the Policy.
On the basis of all the above, and in the lack of any evidence to the contrary, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 disputed domain name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: May 12, 2016
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