The Complainant is Mubadala Trade Marks Holding Company - LLC & Mubadala Investment Company PJSC of Abu Dhabi, United Arab Emirates, represented by Allen & Overy LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Euro Equity W.L.L. of Manama, Bahrain. 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 17, 2018. On January 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2018, 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 January 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2018.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 27, 2018. 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
Mubadala Investment Company PJSC is a leading investment company with investments inside the United Arab Emirates (“UAE”) and outside. It is known in the capital investment sector and has won many awards over the years. Its predecessor, Mubadala Development Company, was established in 2002 in Abu Dhabi.
The Complainant has registered the wordmark MUBADALA in both English and Arabic in the UAE and elsewhere in the world. The Complainant owns trademark registrations and applications in various parts of the world and has produced a list that shows 83 such registration/application. Its trademark applications in the UAE date back to the year 2008.
The Complainant has registered the domain name on December 8, 2004.
The Respondent has registered the disputed domain name on December 4, 2008. The Respondent is a company registered in Bahrain. The disputed domain name resolves to the Registrar’s parking page with pay per click links. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns trademark registrations for MUBADALA. The disputed domain name is confusingly similar as it contains the word “Mubadala”, which is the trademark of the Complainant. The use of the word “capital” creates confusion with the Complainant as capital investment is a key activity of the Complainant. Adding the generic Top-Level Domain(“ gTLD”) does not create any distinction.
The Respondent has no rights or legitimate interests in the disputed domain name as it is not using it in connection with a bona fide offering of goods or services, is not commonly known by the domain name and is not making legitimate noncommercial or fair use of it. The website to which it resolves contains links to sponsored listings or pages belonging to the Registrar. The Complainant has not authorized the use of its trademark by the Respondent.
The disputed domain name was registered and is being used in bad faith. The Respondent knew or should have known of the Complainant’s trademark as the Complainant’s trademark is well-known in the region where the headquarters of the Complainant is located. The fact that the disputed domain name contains the word “capital” confirms that the Respondent is aware of the Complainant as capital investment is the Complainant’s field of business. The disputed domain name resolves to a website that contains links to sponsored sites and therefore the Complainant contends that the registration was made for the purpose of selling the disputed domain name or to benefit from revenue that could be generated or to prevent the Complainant from registering the domain name. Alternatively, the Respondent’s act of passive holding could be considered as bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant holds many trademark registrations for the trademark MUBADALA including registrations in UAE. The Panel is satisfied that the Complainant has established its ownership of the trademark MUBADALA.
The disputed domain name comprises the Complainant’s trademark MUBADALA combined with the generic term “capital” which does not eliminate the confusing similarity with the trademark MUBADALA. It is the Panel’s view that the use of the term “capital” further enhances the impression of being affiliated with the Complainant as the Complainant is known for its activities in capital investment. The gTLD “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is a company operating in the UAE and is well-known not only in the UAE but also in the neighboring countries. The Respondent resides in the country of Bahrain which is a neighboring country and is therefore unthinkable that the Respondent was not aware of the Complainant and its activities, particularly that the choice of the generic term “capital” indicates the field in which the Complainant operates. It is worth noting in this context that the Complainant’s predecessor whose name also contains the word “Mubadala” was created in 2002, which is 8 years prior to the registration of the disputed domain name. Hence, the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name. The bad faith registration of the disputed domain name is clear from the fact that the trademark MUBADALA, the Complainant and its operations were obviously known to the Respondent, even if the Complainant lacked registered rights at the time the disputed domain name was registered. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third edition (“WIPO Overview 3.0”) section 3.8.2.
The disputed domain name is being used in bad faith as it resolves to a parked website which contains links that lead to pages of sponsored links. Such facts indicate that the Respondent is using the Complainant’s trademark with the aim of attracting Internet traffic to its website with the intent of commercial gain.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
Nayiri Boghossian
Sole Panelist
Date: March 13, 2018
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