The Complainant is Dubizzle Limited BVI of Tortola, Virgin Islands, Overseas Territory of the United Kingdom and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Syed Waqas Baqir of Dubai, New York, United States of America, self-represented. 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 March 14, 2018. On March 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 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 March 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2018. On March 26, 2018 and March 27, 2018, the Respondent submitted two emails indicating that it was ready to transfer the disputed domain name but queried whether the Complainant would make an offer to pay its expenses. The Center notified the Parties on March 28, 2018 that if they wished to explore settlement options, the Complainant should submit a request for suspension by April 3, 2018 and that if no request for suspension was received, the proceedings would continue. The Complainant sent an email on March 28, 2018 to the Respondent indicating that it would not make any reimbursement of expenses as proceedings had formally commenced but that if the Respondent agreed to transfer the disputed domain name the Complainant would make a request to suspend the case. The Center did not receive a request for suspension from the Complainant. The Respondent did not submit a substantive response by the specified due date of April 15, 2018. On April 16, 2018, the Center informed the Parties the commencement of the panel appointment process.
The Center appointed Richard Tan as the sole panelist in this matter on April 23, 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
The Complainant operates an online classifieds website under the domain name that enables users to advertise goods and services for sale and purchase as well as to display profiles on social networking sites and job listings across different locations and industries. It owns trademark registrations in various jurisdictions, including in the United Arab Emirates (“UAE”) for DUBIZZLE in international classes 35, 38 and 42 registered on March 8, 2015 (registration nos. 194179, 194180 and 194181) and for DUBIZZLE and logo in international class 35 registered on March 8, 2015 (registration no. 194182) and has filed trademark applications for DUBIZZLE in several other jurisdictions which are pending. It registered its domain name on July 13, 2005.
The disputed domain name was registered on October 5, 2016 and resolves to a website that has offered products that compete with the Complainant’s website and that currently redirects Internet users to a website featuring links to third-party websites. 5. Parties’ Contentions A. Complainant
The Complainant’s main contentions are:
The disputed domain name is confusingly similar to the Complainant’s registered marks which have been in long use and acquired reputation across numerous jurisdictions in which the Complainant operates in 11 countries and over 21 cities. The Respondent has merely added the generic, descriptive term “mart” to the Complainant’s DUBIZZLE trademark, thereby making the disputed domain name confusingly similar to the Complainant’s trademark. Further, the Respondent’s use of the disputed domain name for an online marketplace contributes to the confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant and has not received any licence or authorization to use the Complainant’s registered trademarks. The Respondent is not commonly known by the disputed domain name. The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name. It is instead offering and attempting to sell products which are available for purchase through the Complainant’s website and is using its website to redirect Internet users to a website featuring links to third-party websites. The Complainant alleges that the Respondent must be receiving pay-per-click fees from the linked websites that are listed at the Respondent’s website and the use of such website using pay-per-click links does not constitute a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. The Respondent has also offered the disputed domain name in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name, which is further evidence of the Respondent’s lack of rights and legitimate interests.
The disputed domain name was registered and is being used in bad faith, as evidenced by the Respondent’s registration of the disputed domain name that incorporates the Complainant’s famous DUBIZZLE trademark in its entirety. By adding the generic term “mart”, which has an obvious relationship to the Complainant and its business, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark. Further, at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks. The registration of domain names containing well-known trademarks constitutes bad faith. Further, the Respondent’s use of the disputed domain name is a disruption of the Complainant’s business and is evidence of bad faith registration and use. B. Respondent
The Respondent did not submit a formal or substantive response to the Complainant’s contentions by the date the response was due i.e. April 15, 2018.
However, the Respondent sent two emails on March 26, 2018 and March 27, 2018 to the Center copied to the Complainant. The email of March 26, 2018, which was in response to the Center’s notification of the commencement of the proceedings and the attached Complaint, appeared to query what the matter was about. The Center responded to the Respondent’s query by email dated March 26, 2018, by referring the Respondent to the Notification of Complaint and the Commencement of Administrative Proceedings and advising that the due date for submission of the Respondent’s response was April 15, 2018. The Respondent then sent its email on March 27, 2018 to the Center again copied to the Complainant which stated: “I am ready to transfer the domain. Need to know what’s your offer to pay my expenses since I purchased the domain before you even raised this issue. It’s nearly 2 years. So check with your management and revert back me with your offer.”
As noted in the Procedural History above, the Center sent an email to the Parties on March 28, 2018 in reference to the Respondent’s email of March 27, 2018 indicating that if the Parties wished to explore settlement options, the Complainant should submit a request for suspension. In the event, no request for suspension was received by the Center and the Respondent did not respond to the Center’s email of March 28, 2018 or submit a substantive response by the specified due date of April 15, 2018. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant has the burden of proving each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, the Panel finds that the Complainant has rights in its trademark DUBIZZLE as the trademark has been registered in several jurisdictions since March 8, 2015 and has been in use by the Complainant in commerce for an online website for the sale and purchase of goods since at least 2005.
It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In this case, the disputed domain name incorporates the Complainant’s registered mark DUBIZZLE with the addition of the generic, descriptive term “mart” which is generally understood to mean “market”.
It is well established that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See Section 1.8, WIPO Overview 3.0.
As the dominant feature of the disputed domain name consists of the Complainant’s mark, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and the mere addition of the general descriptive term “mart”, is insufficient to prevent a finding of confusing similarity.
With regard to the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name, the gTLD is viewed as a standard registration requirement and as such should be disregarded. See Section 1.11.1, WIPO Overview 3.0.
The Panel accordingly finds that the disputed domain name is confusingly similar to marks in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the overall burden of proof is on the complainant to establish a lack of rights or legitimate interests on the part of the respondent, where a complainant is able to make out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element of the Policy. See section 2.1, WIPO Overview 3.0.
The Respondent has not submitted a substantive response to the Complainant’s contentions mentioned above.
However, in its email of March 27, 2018 to the Center copied to the Complainant, the Respondent stated that it “purchased the domain before you even raised this issue”. The mere fact that the Respondent may have acquired or registered the disputed domain name before the Complaint was filed is however insufficient to establish rights or legitimate interests. The Respondent has to show that before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name was in connection with a bona fide offering of goods or services. See UDRP paragraph 4(c)(i). As found below, the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
In an earlier email dated February 24, 2018 from the Respondent to the Complainant in response to a cease-and-desist letter sent by email on February 13, 2018, the Respondent also stated “…I am not offending anybody’s rights or using trademark. I am using my own domain and will make own website, first name is same like yours, this is just a coincident (sic).” Although this assertion has not been set out in a substantive reply to the Complaint, the Panel is prepared to consider whether there are any merits in this assertion based on the totality of the evidence.
The Complainant’s mark DUBIZZLE appears from Annex 10 to the Complaint (which contains a history of the Complainant and articles about it) to be an invented word which the founders coined from a play on “Dubai” (where the Complainant’s business was launched) and “business”. It is difficult to see that it could have been sheer coincidence that the Respondent adopted an identical unique name as the Complainant’s mark for the dominant part of the disputed domain name. The Respondent offered no explanation as to how or why it chose to use the mark in the disputed domain name. It was not affiliated with the Complainant and had not received any licence or authorization to use the Complainant’s registered trademarks. The absence of a business relationship was considered a factor in the finding of no legitimate interest in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312. There is also no evidence that the Respondent was commonly known by the disputed domain name.
On the other hand, the Respondent registered the disputed domain name only some years after the Complainant first used the mark in commerce. The evidence points to the fact that the Respondent must have known of the Complainant’s mark and reputation when it decided to acquire or register the disputed domain name.
The use of the website with the confusingly similar disputed domain name suggests that the Respondent intended and intends for commercial gain to divert potential customers of the Complainant to the Respondent’s website. The Respondent has offered to sell products which are available for purchase through the Complainant’s website and is currently using the website to redirect Internet users to a website featuring links to third-party websites. This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
The evidence shows that the Respondent deliberately used the disputed domain name in connection with its website to create a misleading impression of association with the Complainant in order to capitalize on the Complainant’s reputation and goodwill in the mark. The Respondent’s website has offered products in competition with the Complainant’s website and redirects Internet users to a website featuring links to third-party websites. The Complainant’s assertions that the Respondent must be receiving pay-per-click fees from the linked websites that are listed at the Respondent’s website have not been disputed. The use of a domain name to host a parked page comprising pay-per-click links does not constitute a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9, WIPO Overview 3.0.
In all the circumstances and based on the evidence and material before the Panel, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.
UDRP paragraph 4(b) provides that bad faith may be evidenced by a number of circumstances including, but not limited to, the use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4, WIPO Overview 3.0.
In this case, the Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the Respondent is not affiliated with the Complainant. The Respondent has no legitimate interests in the disputed domain name.
Moreover, on the evidence, prior to the Respondent’s registration of the disputed domain name, the Respondent must have known of the Complainant’s reputation and goodwill in its online classified services website offering goods and services, but deliberately chose to take unfair advantage of the Complainant’s reputation and goodwill by using the confusingly similar disputed domain name in order to ride upon that reputation. See Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 (“Moreover the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith”). Its attempt to mislead customers and members of the public into thinking that the Respondent’s online marketplace website was associated with the Complainant is clear evidence of bad faith registration and use.
The Respondent’s bad faith registration and use is further evidenced by the presence of third-party, pay-per-click links at the website. By allowing the use of pay-per-click links on a website having a confusingly similar domain name to the Complainant’s marks, the Respondent must have intended to use the disputed domain name to attract Internet users to its website for commercial gain and such intentional use constitutes bad faith under UDRP paragraph 4(b).
In relation to the Complainant’s assertion that the Respondent’s offer to sell the disputed domain name for a consideration in excess of his out-of-pocket expenses constituted bad faith, the Panel considers that as the Respondent had no independent rights or legitimate interests in the disputed domain name to begin with, its offer to sell the disputed domain name for a price which was far in excess of its out-of-pocket expenses is also capable of constituting bad faith.
In all the circumstances, the Panel concludes and finds that the disputed domain name was registered and is being used in bad faith within the meaning of 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.
Richard Tan
Sole Panelist
Date: May 7, 2018
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