The Complainant is S FZ LLC of Dubai, United Arab Emirates, represented by Eversheds, LLP, United Arab Emirates.
The Respondent is Ruiling Wang, Comcom Communications LLC of Dubai, United Arab Emirates, internally represented. 2. The Domain Name and Registrar
The disputed domain name (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 October 12, 2016. On October 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 October 19, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was November 8, 2016. The Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed with the Center on November 7, 2016.
The Center appointed John Swinson, Tony Willoughby and Linda Chang as panelists in this matter on November 30, 2016. The Panel finds that it was properly constituted. Each member of 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.
The Center received supplemental filings from the Complainant and the Respondent on December 7, 2016. 4. Factual Background
The Complainant is S FZ LLC of the United Arab Emirates. The Complainant operates an online department store under the brand “S”, which, according to the Complaint, is the largest e-commerce platform in the Middle East.
The Complainant registered the domain name on February 1, 1996, and began operating its current e-commerce business in 2005. According to the Complaint, the Complainant’s store attracts more than 31 million unique visits per month. The Complainant has earned over USD 300 million in revenue in the last year, and has devoted USD 50 million to advertising in the Middle East.
The Complainant owns a number of trade marks for SOUQ.COM, either in stylized form as set out below or in Arabic script, in various Middle Eastern jurisdictions.
The earliest such registrations include:
- trade mark registration number 84198, registered in Jordan filed on February 15, 2006; and
- trade mark registration number 105684, registered in the United Arab Emirates filed on March 7, 2006, (the “Trade Mark”).
The Respondent is Ruiling Wang of Comcom Communications LLC, also based in the United Arab Emirates. The Respondent operates a competing e-commerce website at the Disputed Domain Name known as King Souq. The Respondent registered the Disputed Domain Name on December 9, 2012, and began operating the online store in 2013.
The Respondent owns a trade mark for “KINGSOUQ For Value, For Pleasure”, also in stylized form, in the United Arab Emirates (trade mark registration number 198802), registered from September 30, 2013. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The dominant part of the Disputed Domain name is “s”, which is identical to the Trade Mark. The word “king” is descriptive of a purported quality, and does nothing to distinguish the Disputed Domain Name from the Trade Mark. Rights or Legitimate Interests
The Complainant is not aware of any trade marks or trade names registered by the Respondent relating to the Disputed Domain Name. The Complainant has never licensed or authorized the Respondent to use the Trade Mark.
The Respondent registered the Disputed Domain Name on December 9, 2012. The Complainant established its business in 2005, and first registered the Trade Mark in 2006. It is inconceivable that the Respondent was not aware of the Complainant’s business at the time it registered the Disputed Domain Name.
The Respondent is using the Disputed Domain Name in connection with an offering of goods or services of the same kind as the Complainant. The Respondent is not known as “kings”, nor does it own any legitimate business known as “kings”. There can be no such claim where the Respondent is using the Disputed Domain Name to benefit from the fame of and goodwill associated with the Complainant’s brand. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy). Also, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website (paragraph 4(b)(iv) of the Policy).
The Trade Mark is well-known and widely recognised. There can be no doubt that the Respondent had actual or constructive knowledge of the Trade Mark before registering the Disputed Domain Name. The Respondent is creating confusion among the Complainant’s customers by diverting them to the Disputed Domain Name for financial gain. The Respondent registered the Disputed Domain Name in order to suggest a connection between the Complainant’s business and the Respondent’s business that does not exist. B. Respondent
The Respondent makes the following submissions. Identical or Confusingly Similar
The Disputed Domain Name is not identical or confusingly similar to the Trade Mark. The Trade Mark is identical to the common word “souq”, which means “market”. The Complainant does not have exclusive rights to this term. There are many domain names which incorporate this term, and a search of this term receives many search results.
The incorporation of the term “king” distinguishes the Disputed Domain Name from the Trade Mark. Rights or Legitimate Interests
The Disputed Domain Name was registered in 2012 as an extension of Comcom General Trading LLC. The business at the Disputed Domain Name is a legitimate business which operates both online and offline under a trade license. The Respondent also has a registered trade mark which reflects the Disputed Domain Name.
The business at the Disputed Domain Name has more than 150,000 registered customers, and has delivered more than 1 million orders. It employs more than 200 people across Dubai, China, Oman and Qatar. As such, the Disputed Domain Name is also a recognised brand with a good reputation in the Middle East. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name in 2012 in good faith, and not on the basis of the popularity of the Complainant’s business or domain name.
The Respondent has been operating the business at the Disputed Domain Name for 3 years. It does not market the business at the Disputed Domain Name in a way which disrupts the Complainant, or which misleads consumers. There is no evidence that the Complainant’s business is down due to the Respondent, or that the Complainant’s customers have been misled. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 in bad faith.
The onus of proving these elements is on the Complainant. A. Supplemental Filings
On December 7, 2016, the Complainant emailed the Center copies of updated trade mark registration certificates for two of the Trade Marks registered in the United Arab Emirates. In response, the Respondent also emailed the Center a copy of its trade mark registration certificate (which was already included in the Response). The Center forwarded each of these emails to the Panel.
The Panel acknowledges receipt of these emails. These supplemental materials provide evidentiary support for assertions in the Complaint and the Response that appear to be uncontroversial. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Trade Mark is a figurative mark featuring the stylized text “s”. The term “souq” is a common or generic term for a type of market.
The panel in S FZ LLC v. Benny Bertelsen, Advanced Digital Solutions,WIPO Case No. D2015-2261 (“Advanced Digital Solutions”), which featured the same complainant as in this proceeding, and in which one member of this Panel also was also a panelist, considered whether the complainant could be said to have rights in the stylized “s” trade mark for the purpose of the Policy where “there is a legitimate question as to whether the complainant could have obtained trade mark rights in the textual element alone.”
The panel in Advanced Digital Solutions considered that the trade mark should only be disregarded “if the textual element relied upon was so ‘completely devoid of distinctive character that it is incapable of distinguishing the Complainant’s goods and services’” (see Jobs on the Net Limited, Andrew Middleton v. International New Media Limited,WIPO Case No. D2011-1531). Using this test, the panel decided that “s” was sufficiently distinctive at the time the relevant proceedings were commenced.
In determining the distinctiveness of the Trade Mark for the purpose of the Policy, this Panel relies on the decision in Advanced Digital Solutions.
The question now before the Panel is whether the Disputed Domain Name is confusingly similar to the Trade Mark. The Disputed Domain Name wholly incorporates the Trade Mark and adds the prefix “king”, which is also a common or generic term often used to connote high quality. Essentially, the Disputed Domain Name is comprised of two generic or dictionary words.
Not without some hesitation, and given the Panel’s finding that the Trade Mark is sufficiently distinctive for the purpose of the Policy, the Panel finds that the addition of the term “king” does not sufficiently distinguish the Trade Mark from the Disputed Domain Name for the purposes of the assessment under paragraph 4(a)(i) of the Policy.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.
In summary, the Complainant makes the following submissions in support of this element:
- The Complainant is not aware of any trade marks or trade names registered by the Respondent relating to the Disputed Domain Name.
- The Complainant has not licensed or authorized the Respondent to use the Trade Mark.
- The Respondent was aware of the Complainant’s business at the time it registered the Disputed Domain Name.
- The Respondent is not known as, and does not operate any legitimate business known as, “Kings” or similar. This cannot be the case where the Respondent is using the Disputed Domain Name to trade off the reputation in the Trade Mark.
The Respondent’s submissions successfully rebut these arguments made by the Complainant, and establish that the Respondent does have rights to or legitimate interests in the Disputed Domain Name.
Even if the Complainant considers that the Respondent’s use of the Disputed Domain Name is not bona fide such as to confer rights or legitimate interests under paragraph 4(c)(i) of the Policy, it has failed to convincingly address the possibility that the Respondent might have such rights under paragraph 4(c)(ii) of the Policy.
Both parties are based in Dubai and operate e-commerce platforms. The Complainant began operating its online store under the Trade Mark in 2005, and the Panel accepts that the Complainant and the Trade Mark enjoy a considerable reputation in the Middle East. However, the Respondent registered the Disputed Domain Name in 2012 and began operating in 2013, over 3 years before the Complaint was filed. While smaller than that of the Complainant, the Respondent’s business is not insignificant. The Respondent registered its trade mark in 2013, in the United Arab Emirates, the dominant aspect of which reflects the Disputed Domain Name.
Given this, the basis for the Complainant’s statement that it “is not aware of any other trademarks or trade names that may have been registered by the Respondent relating to the Disputed Domain Name” may be literally correct in relation to the Complainant’s knowledge, but is ultimately unhelpful. The Complainant does not refer to any searches it had undertaken to reach this conclusion, or provide any other evidence to support this statement.
Further, while the Panel understands that the doctrine of laches does not generally apply under the Policy, in these circumstances, the Panel considers that the Complainant’s delay in filing the Complaint has affected its ability to establish the elements required under the Policy (see paragraph 4.10, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
As stated above, the Respondent has now been operating a business, based in the same city as that of the Complainant, for over 3 years. During that time, the Respondent has invested in marketing and has developed its own customer base. The Complainant must have been aware of the Respondent’s business, and could have filed a complaint at any time following the Respondent’s registration of the Disputed Domain Name. Its failure to do so has allowed the Respondent to solidify its rights to the Disputed Domain Name.
There is no evidence before the Panel that the Complainant had put the Respondent on notice that the Complainant believed the Respondent was infringing the Complainant’s rights in the Trade Mark.
In the circumstances, the Panel considers that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services, which also demonstrates rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Therefore, the Complainant does not succeed in establishing the second element of the Policy.
In so finding, the Panel is not seeking to make any finding as to United Arab Emirates law, it is simply applying the terms of the Policy. If the Respondent is, as the Complainant contends, infringing the Complainant’s trade mark rights, that is a matter to be dealt with by the relevant court. C. Registered and Used in Bad Faith
In light of the above finding, the Panel is not required to consider the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Presiding Panelist
Tony Willoughby
Panelist
Linda Chang
Panelist
Date: December 12, 2016
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