The Complainants are Rasmala UK Limited, United Kingdom, Rasmala Holding Ltd, United Arab Emirates and Rasmala Investment Bank Limited, United Arab Emirates, represented by Clyde & Co., United Arab Emirates (“U.A.E.”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States” or “U.S.”) / Taer Amro, Rasmalafx Tech Solutions Limited, Bulgaria. 2. The Domain Names 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 June 18, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 30, 2019.
The Center verified that the Complaint together with the amended 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 July 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2019.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on July 26, 2019. 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 Complainants: i. Rasmala UK is a limited liability company incorporated in the United Kingdom, ii. Rasmala Holdings is a limited liability company incorporated in the Dubai International Financial Centre in the U.A.E. and Rasmala Holdings is a wholly owned subsidiary of Rasmala UK. iii. Rasmala Investment Bank is a limited liability company incorporated in the Dubai International Financial Centre in the U.A.E. and Rasmala Invesment Bank is a wholly owned subsidiary of Rasmala Holdings. The Complainants are part of an asset management and investment banking group which provides a range of investment services to institutional and private investors.
Pursuant to Annex 7 and 8 of the Complaint, the Complainants own many registered RASMALA trademarks which are figurative trademarks comprising an Arabic term above the word RASMALA in white on a blue background in U.A.E. and European Union since 2010, including the European Union trademark No.009175506, registered on December 6, 2010.
Pursuant to Annex 10 of the Complaint, the Complainants are the registrant of numerous domain names consisting of the RASMALA trademark under various generic Top-Level Domains (“gTLDs”) (among others , , , , , and ).
The disputed domain name was registered on September 14, 2018.
According to the screenshots attached to the Complaint (Annex 11.1), the disputed domain name resolves to a website in English and Arabic (the Respondent’s website) that purports to offer service for asset management and investment.
Although the Complainants submitted evidences which shows that the disputed domain name is linked to an active website, the Panel visited the disputed domain name on August 6, 2019 and determined that the disputed domain name is active and the disputed domain name resolves to a website which offers investment services. 5. Parties’ Contentions A. Complainants
The Complainants request the transfer of the disputed domain name. The Complainants are of the opinion that the disputed domain name is confusingly similar to their RASMALA trademark. The Complainants assert that the addition of the descriptive term “bank” do not prevent a finding of confusing similarity with the Complainants’ RASMALA trademark. The Complainants contend that, in addition to their ownership of the Figurative Mark, they or their predecessors have consistently used a word mark RASMALA in connection with asset management and investment banking services since the inception of their business in 1999.
Furthermore, the Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the evidence overwhelmingly shows that the Respondent has been using the disputed domain name to: i. impersonate the Complainants; and ii. commit financial fraud on members of the public. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainants and the Respondent.
Additionally, the Complainants argue that the Respondent prior to the registration of the disputed domain name, the Complainants already engaged an UDRP proceeding (see Rasmala plc, Rasmala Holdings Ltd., Rasmala Investment Bank Limited v. Registration Private, Domains By Proxy LLC / Taer Amro,WIPO Case No. D2018-2068) against the same Respondent regarding other domain names and the Panel has ordered their transfer to the Complainants, therefore, it is impossible that the Respondent was not aware of the existence of the Complainants and their trademarks. The Complainants also allege that the Respondent has appropriated industry awards that were in fact won by the Complainants and has displayed the relevant awards on their website as though they were their own. The Complainants refer in particular to the MENA Fund Manager Performance Awards Winner 2017 for Sharia Fixed Income, awarded to the Rasmala Global Sukuk Fund, and to the Global ISF Investor MENA Awards 2015 Regional Fixed Income Manager of the Year awarded to the Complainant Rasmala Investment Bank Limited. The Complainants refer to other awards claimed by the Respondent which do not in fact exist. The Complainants also allege that the Respondent’s website itself is fraudulent.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainants particularly argue that the Respondent must have been well aware of the Complainants RASMALA trademark, when registering the disputed domain name, particularly as the Respondent prominently uses the Complainants’ word and figurative RASMALA trademarks on the websites linked to the disputed domain name without any disclosure of the missing relationship between the Complainants and the Respondent. The Complainants contend that the Respondent is using the disputed domain name in the manner described above in a deliberate attempt to recreate the overall look and feel of the Complainants’ website, and to thereby mislead potential online consumers that the Respondent’s website is connected with the Complainants in order to commit fraud. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainants must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have 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.
Paragraph 4(a) of the Policy states that the complainant bears the burden of proving that all these requirements are fulfilled, even if the respondent has not replied to the complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainants, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0. A. Identical or Confusingly Similar
The Policy requires the Complainants to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights. The Panel is satisfied that the Complainants are the owner of the trademark RASMALA as evidenced in the annexes to the Complaint. The Complainants have registered the trademark RASMALA in different countries. The trademarks were registered long before the registration of the disputed domain name.
It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainants’ 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 3.0. Although not identical, the disputed domain name fully incorporates the trademark RASMALA and therefore, the disputed domain name is confusingly similar to the trademark RASMALA as the addition of the word “bank” is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainants’ trademark (see WIPO Overview 3.0, section 1.8; WhatsApp, Inc. v. Abdallah Almqbali,WIPO Case No. D2016-1287; Belfius Banque SA / Belfius Bank NV v. linyanxiao,WIPO Case No. D2016-0957; AXA SA v. Oghenejokwo Buhari, Sjbuhari Ltd.,WIPO Case No. D2016-2178).
In relation to the gTLDs, the WIPO Overview 3.0, section 1.11 further states: “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
For the purposes of testing confusing similarity, it is well established that the gTLD “.org” can be ignored (see The Midwest Clinic a/k/a The Midwest Clinic International Band and Orchestra Conference v. Victor Gill,WIPO Case No. D2018-2556).
Accordingly, the Panel finds that the Complainants have established the first requirement, namely paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often-impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainants are required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that they have rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the safe harbors of paragraph 4(c) of the Policy.
In the light of the evidence submitted by the Complainants, and the Panel’s researches, e.g., trademark registration certificates, domain name registrations, previous usages of RASMALA name, previous UDRP decision etc., it is clear to the Panel that the Complainants have earlier and lawful rights in the RASMALA trademarks. Therefore, the Panel finds on the current record that the Complainants have proved rights in the RASMALA trademarks and established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy.
The Panel is convinced that the Respondent must have been aware of the Complainants’ registered trademark and reputation in finance and investment sector, and that the Respondent has deliberately used the RASMALA trademark in the disputed domain name in order to divert Internet users seeking information on the Complainants to the Respondent’s dubious, likely fraudulent content website for the sole purpose of monetary gain. The Panel believes that this does not constitute a bona fide offering of services under the Policy.
Hence, the Panel finds that the Complainants have also satisfied the second requirement of the Policy, namely paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent has registered and is using the disputed domain name in bad faith. It appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainants, in particular with its provided investment services. According to the screenshots of the websites linked to the disputed domain name provided as annexes to the Complaint, the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to create the false impression that the website is somehow officially linked to the Complainants. The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. By this, the Panel believes that the disputed domain name was registered and used for the sole purpose to commercially profit from misled consumers searching for the online games provided by the Complainants.
Moreover, the Respondent has previously registered at least one other domain name incorporating the RASMALA trademark (see Rasmala plc, Rasmala Holdings Ltd., Rasmala Investment Bank Limited v. Registration Private, Domains By Proxy LLC / Taer Amro,WIPO Case No. D2018-2068). For the purposes of the third element of the Policy, such pattern of abusive conduct shall be further evidence of bad faith.
The Panel finds that the Respondent has misleadingly included the Complainants’ 2015 and 2017 industry awards on its website. In the circumstances, the Respondent’s use of these awards is clear evidence of bad faith. Given the reputation of the Complainants’ RASMALA trademark – registration and use of which precede by far the registration of the disputed domain name – it is not conceivable that the Respondent did not have in mind the Complainants’ trademark when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2).
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 namely, Rasmala Invesment Bank Limited.
Gökhan Gökçe
Sole Panelist
Date: August 6, 2019
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