The Complainant is I.P.M Limited of Port Guernsey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Kadasa Intellectual Property, Saudi Arabia.
The Respondent is Y. Barakat ALShamrani of Wadi Aldwasser, Saudi Arabia, Self-represented. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2018. On March 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 20, 2018, the Registrar transmitted by email to the Center its verification response. On March 21, 2018 the Center requested a one page amendment to the Complaint. The Complainant filed an amendment to the Complaint the same day.
The Center verified that the Complaint together with the amendment to 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 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2018. The Response was filed with the Center on April 11, 2018.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 19, 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.
On May 4, 2018, the Panel, in accordance with paragraph 10(c) of the Rules, extended the due date of the decision to May 11, 2017. On May 7, 2018, the Center received an email from the Complainant requesting permission to file a written reply to the Response. The Request was forwarded to the Panel the same day. The Panel then advised that it did not see a need for the further submissions. The same day an email was received from Respondent in response to Complainant request, objecting to any such Reply. The Center acknowledged receipt of Respondent’s email and forwarded it to the Panel. 4. Factual Background
The Complainant is well-known in the Arab world for its magazine published under the trademark SAYIDATY.
The Complainant started using the trademark SAYIDATY since 1981 and has registered the trademark SAYIDATY in Arabic and English, separately and combined as well as in combination with other elements. The registrations cover most of the Arab countries in addition to the United States of America and the European Union. The registrations date back to the late 1980’s.
The Complainant has registered domain names, which contain the trademark SAYIDATY starting from 2011.
The Respondent has registered the domain names , , and on October 27, 2005, June 22, 2006, and July 28, 2009 respectively. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has used the trademark SAYIDATY since 1981 and has registered it the first time in 1989. The Complainant’s trademark is registered in many classes and in both languages. It has acquired fame and recognition and its magazine which is published under the same trademark is distributed in many parts of the world. The word “sedty” used in the disputed domain names is phonetically similar to the trademark of the Complainant. The websites to which two of the disputed domain names resolve contain information and material similar to the line of activity of the Complainant. Such use creates confusion. This is particularly true in light of the fact that the Complainant’s trademark is considered well-known. The word “sedty” is simply a misspelling of the Complainant’s trademark and is not a new trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it was not authorized to use the word “sedty”. Furthermore, it is unthinkable that the Respondent would have any rights or interests in the word “sedty”, which is the transliteration of the Complainant’s trademark. The Respondent is aiming to benefit from the repute of the Complainant’s trademark in order to attract web users. The use of the disputed domain names including the word “sedty” is not a bona fide or a legitimate noncommercial or fair use particularly that they are being used for the same services as the Complainant’s. The Respondent must have been aware of the Complainant’s trademark due to the long use of said trademark and its fame. The Respondent was not commonly known by the dispute domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Respondent’s bad faith is demonstrated by the fact that the registration of the disputed domain names came many years after the Complainant had started using the trademark SAYIDATY and had registered it. The trademark SAYIDATY had become well-known. The bad faith is further demonstrated by the fact that the disputed domain name contains a transliteration of the Complainant’s trademark and the websites to which two of the disputed domain names resolve offer services similar to those offered by the Complainant. Furthermore, the Complainant registered a domain name in 2000. In addition, the Respondent is using the trademark of the Complainant on its website. Such use also appears on the Respondent’s Facebook page. The Respondent is attempting to gain web-traffic by creating the likelihood of confusion with the Complainant and is doing so for commercial gain. There are advertisements on the Respondent’s websites in addition to offering services. The activity of the Respondent can be considered as “typo-squatting”. Another indication of bad faith is that the Respondent has registered a variety of domain names with different domains. B. Respondent
The Respondent contends that its website is a forum where users post their views while the website of the Claimant is not a forum. As a result, the two websites are different. The Respondent contends that the disputed domain names are different from the Complainant’s trademark as they consist of only 5 letters while the Complainant’s trademark consists of a bigger number of characters. The disputed domain names are not a spelling error but a word that is different altogether from the Complainant’s trademark. The trademark as a logo used by the Respondent on its website is different from the trademark logo used by the Complainant. As a result, there is no similarity between the disputed domain names and the Complainant’s trademark.
A unique domain name is created by the Respondent. This was done in 2005 and the Complainant only objected to it in 2018 in order to take over the success of the Respondent. The Complainant has previously confirmed the ownership of the disputed domain names by the Respondent. The Respondent has acquired rights from the use of the disputed domain names.
The areas of business of the Complainant and Respondent are different. The Respondent’s website is a forum while the Complainant’s website is a women’s magazine. The Respondent’s website is more famous of the Complainant’s as it allows users to write and interact with each other. The two articles which constituted copyright infringement were posted by users and the Respondent removes any violating material. The Respondent does not use the trademark of the Complainant. It gets traffic from search engines and its members. There is a difference between SEDTY سيدتي used by the Respondent and SAYIDATY سيّدتي used by the Complainant as the mark (ّ ) is only used in the latter. This changes pronunciation and meaning. The website of the Respondent has the following title in Arabic منتدى سيدتي النسائي while that of the Claimant has the title مجلة سيدتي . The trademark SAYIDATY cannot be protected as it is generic. The Respondent includes references to a number of decisions which were decided in favor of the Respondent. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns a number of trademark registrations for the trademark SAYIDATY registered in many Arab countries, the United States and the European Union. The Panel is satisfied that the Complainant has established its ownership of the trademark SAYIDATY.
Although visually the word “sedty” is different from the trademark SAYIDATY, the word “sedty” is phonetically similar to the trademark of the Complainant. As per a prior UDRP decision “The Panel notes that despite of the visual differences arising from the variations in the spelling of the WHATSAPP trademark and the disputed domain name, there are still significant phonetic similarities to be found arising from a similar pronunciation (WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-1708). The fact that the Respondent’s disputed domain names consist of 5 letters versus 8 does not eliminate the phonetic similarity.
The generic Top-Level Domains should typically be ignored when assessing confusing similarity as established in prior decisions.
The Respondent argues that its website is a forum while the Complainant’s website is not. It also argues that its website uses a different logo. It is however well established that the content of a website has no bearing over the finding of confusing similarity except in certain cases. In the case in hand, the content of the Respondent’s website only confirms that the Respondent has chosen the disputed domain names knowing that it will cause confusion with the Complainant’s trademark. The Respondent’s website covers the same business as the Complainant’s and the Complainant’s trademark is well-known.
As for arguing that the word “sedty” is a word, it only confirms that this is the same word as the Complainant’s. In Arabic language the word “sedty” would have the same meaning as “sayidaty” and that is “my lady”.
Consequently, the Panel finds that the disputed domain names are 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 names, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain names.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 6(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain names. The Respondent merely says that it has acquired rights in its domain name without showing any proof. The fact that this complaint is filed now when the dispute domain names were registered in 2005 does not establish any rights in the disputed domain names. “It is well settled under the Policy that a knowingly infringing use of a trademark to offer goods and services is not a bona fide offering of goods and services under the Policy” (U-Haul International, Inc. v. PrivacyP / Ken Gossett,WIPO Case No. D2011-0347. As a result, the Respondent has not acquired any rights because its use was illegitimate in the first place.
The Respondent contends that the Complainant has previously confirmed the ownership of the disputed domain names by the Respondent. Such confirmation was in the context of filing proceedings against the Claimant for a website that is run by it. The Panel fails to see how merely referring to the disputed domain names as the Respondent’s domain names would confer any rights or legitimate interests.
In addition to all of the above, the Complainant’s trademark is famous in the Arab world. The Complainant has clearly chosen the word “sedty” with the intention of trading off such reputation. Such use cannot constitute a legitimate noncommercial or fair use.
Consequently, the Panel is satisfied that the requirements under paragraph 4(a)(ii) of the Policy have been met. C. Registered and Used in Bad Faith
There are many indications that the Respondent has registered the disputed domain names and is using them in bad faith. The Respondent was clearly aware of the Complainant, its trademark and the magazine it publishes as two of the disputed domain names resolve to a website that contains material similar to those published by the Complainant. Contrary to what the Respondent is claiming, the areas of business are identical.
The Respondent’s knowledge of the Complainant and its business is particularly demonstrated by the fact that two articles published by the Complainant have been copied by the Respondent and posted on its website. Furthermore, the Respondent is based in Saudi Arabia, which is the same country of the Complainant and the Complainant’s magazine is very famous in Saudi Arabia and the Arab world.
Bad faith is further demonstrated by the fact that the Respondent has committed the unlawful activity of copyright infringement as demonstrated by the judgments issued against it.
In addition, the Respondent is using the trademark of the Complainant on its website and the word “sedty” is a transliteration of the Complainant’s trademark.
Furthermore, the Respondent’s website includes material similar to those published by the Complainant, which are articles on women issues. There are also advertisements on the Respondent’s pages. The aforementioned facts indicate that the Respondent is attempting to create confusion with the Complainant and its services in order to attract Internet traffic for commercial gain.
The Respondent has put forward certain arguments, which do not have a bearing on the issue of bad faith or which relate to issues of trademark infringement.
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 names, , , and be transferred to the Complainant.
Nayiri Boghossian
Sole Panelist
Date: May 10, 2018
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