The Complainant is Middle East Broadcasting Center (MBC) FZ LLC, United Arab Emirates, represented by Clairmont Novus Avocats, France.
The Respondent is Medo Ali, Egypt. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2021. On May 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2021, 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 Complainant on May 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 19, 2021. 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 May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Center received a communication by email from the Respondent on May 20, 2021. On June 21, 2021, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 2, 2021. 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 is an audiovisual group acquiring, producing, and broadcasting films and information or entertainment programs for the United Arab Emirates, North Africa, Europe, and North America. According to Wikipedia, the Complainant’s online streaming service launched in 2008 as MBC Shahid Online. In 2009, the service became available via Shahid.net as a video on demand streaming platform. A subscription service was introduced in 2014. In January 2019, the Complainant’s services were reported to have more than 140 million viewers across the Middle East through satellite television channels and online. In early January 2020, there was some form of re-branding or relaunch of the service. This platform provided streamed content for free, supported by advertising and a subscription based service, “Shahid VIP”. According to a report in Variety magazine, the launch of the service under the name SHAHID involved a “pharaonic gala, attended by Saudi and United Arab Emirates royals, Arab celebs and Middle East TV heavyweights”. Apparently, a significant marketing point of the service is that it transmits in the order of 49 per cent local, or Arabic, content in contrast to the Middle East Netflix service which contained (it was claimed) only one per centArabic content. The Complainant is the owner, amongst other things, of registered trademarks for: in: (a) the European Union, European Union Trade Mark (“EUTM”) Nos 012843561 (filed on May 5, 2014, and registered on September 25, 2014) and 009843913 (black and white) (filed on March 28, 2011, and registered on August 17, 2011) in respect of a wide range of goods and services in International Classes 16, 35, 38, 41, and 42; (b) Kuwaiti registered trademark No. 102763 (black and white) in respect of services in International Class 41, which was filed on March 20, 2011, and registered on May 17, 2012; (c) Barhaini registered trademark No. 1/103458 in respect of services in International Class 38 which was filed on May 8, 2014, and registered on January 23, 2017; and (d) Omani registered trademark No. 1068242 (black and white) in respect of services in International Class 42 which was filed on May 14, 2011, and registered on September 5, 2012. The disputed domain name was registered on October 28, 2019. It resolves to a website which makes available for streaming and downloading unauthorised copies of material from the Complainant’s services. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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 has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. The Registrar has confirmed that the Registration Agreement is in English. In accordance with paragraph 11 of the Rules, therefore, English is the language of the proceeding. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademark depicted in section 4 above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) , section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10. In the present case, the device element is clearly a very prominent element. However, the element “shahid.net”, reflected in the trademark in Roman characters, and the element “shahid” reflected in Arabic characters, are the only elements capable of being represented in domain names. The Roman character representation of the trademark is clearly recognizable in the disputed domain name. Accordingly, the Panel considers it appropriate to treat the trademark as SHAHID.NET for the purposes of this proceeding under the Policy. Disregarding the “.net” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the alphanumeric string “mosalsalat”. Neither party has indicated if this alphanumeric string has any particular meaning. However, the Google Translate engine translates it into English as “Series”. Apparently, the word “shahid” can be translated from Arabic into English as “watch”. The disputed domain name could be understood therefore as “watchseries.net”. As this requirement under the Policy is essentially a standing requirement, the addition of the descriptive term “mosalsalat” to the representable element of the Complainant’s trademark does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the representable element of the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Arguments based on the potential descriptiveness of the composite expression used by the Respondent are best considered in the context of the second element in section 5B below. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1. The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. As discussed above, the disputed domain name could be translated from Arabic to English as “watchseries.net”. That is, it can be seen by Arabic speakers as a descriptive expression. WIPO Overview 3.0, section 2.10.1, records that registration of a descriptive word or phrase as a domain name does not by itself automatically confer rights or legitimate interests in the domain name. Typically, a finding of rights or legitimate interests will follow only where the disputed domain name is genuinely used in connection with the dictionary meaning or, where there has not been use, demonstrable preparations to use it for that purpose. It could be argued that the Respondent’s manner of use is consistent with that descriptive purpose. Considering that use, it is not clear from the materials submitted in the Complaint whether or not the Respondent charges fees for use of the service or derives advertising revenues. It does appear, however, that the Respondent has targeted the Complainant’s service by populating the Respondent ‘s website with, or almost wholly with, content from the Complainant’s service. The Complainant alleges that the materials made available from the Respondent’s website are unauthorised. The Respondent has not disputed that. Rather, the email received from the Respondent merely stated that the Respondent did not wish to amend anything. The Respondent did not contest the Complainant’s allegation that the Respondent was engaging in unauthorised activity. On the materials before the Panel, therefore, it appears that the Respondent is engaging in infringing activity. By that infringing activity, the Respondent is at the very least diverting potential customers from the Complainant’s service. Accordingly, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that prima facie case. The Panel finds, therefore, that the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. As noted in section 4 above, the Complainant’s trademarks have been registered since 2011 and 2014. The Complainant’s service has been operating as Shahid.net for longer than that. According to the article published on September 1, 2019, the Complainant’s service was reaching 140 million viewers across the Middle East every day. These figures are for the Complainant’s satellite television channels as well as its online video on demand service, “Shahid”. In addition, as noted in section 5B above, there does not appear to be any connection between the Respondent and the name “Shahid”. Accordingly, it seems highly likely that the Respondent was well aware of the Complainant’s “Shahid” service when the disputed domain name was registered. In these circumstances, the Panel finds that the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s trademark, to offer an unauthorised video streaming service in competition with the Complainant. Taking advantage of the Complainant’s trademark in that way constitutes registration of the disputed domain name in bad faith. At the very least, it is likely to divert customers from the Complainant’s service to the service being offered by the Respondent. The use of the disputed domain name to carry out that purpose also constitutes use in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
Sole Panelist
Date: July 16, 2021
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