The Complainant is Mohammad Harb Suleiman Al Farajat, Jordan, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is laura leader, Discover Jordan, United Kingdom, represented by HGF Limited, United Kingdom.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 15, 2021, 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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Response was filed with the Center on December 9, 2021. The Complainant submitted a supplemental filing on December 16, 2021, and the Respondent objected to this filing on December 17, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 21, 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 BackgroundThe Complainant is a Jordanian tour business registered and operating since 1998 under the trade name “Zaman Tours”. The Complaint refers to the Complainant as a “corporation”, but the Commercial Register Certificate attached to the Complaint refers to registration on the “individuals trade register”. The Complaint describes the business as “family-owned”, founded by the Complainant Mohammad Harb Suleiman Al Farajat to organize “the unique Petra by Night (candlelit Petra) Program since year 1998”. Both the Trade Register Certificate for Mohammad Harb Suleiman Al Farajat and the Trade Name Registration Certificate for Zaman Tours list as a “trade type” for the business a classification shown as “100239 Petra by night Program”.
Ancient Petra has been designated a UNESCO World Heritage site since 1985. The Complainant’s tours escort visitors three nights a week and on special occasions to many of the famous Petra landmarks, lit by hundreds of candles and often combined with musical events, storytelling, and other shows. The program is promoted in cooperation with the Petra Development & Tourism Region Authority. An October 2021 letter from the Authority recognizes the Complainant as the “official founder and organizer” of Petra by Night program since 1998”. The Complainant has operated a website advertising the “Petra by Night” program since 2003 at “www.zamantours.com” (the “Complainant’s website”), and the Complainant also advertises the program on linked social media sites (YouTube, Facebook, Instagram, LinkedIn).
The Complainant owns Jordanian trademark registrations numbers 148159 and 148160 (both registered October 30, 2016) for a figurative trademark prominently featuring the English words PETRA BY NIGHT under the image of a candle flame. The Complainant also claims common law rights in PETRA BY NIGHT as a mark and attaches copies of correspondence with multiple Jordanian authorities concerning the program from 1999 onward, as well as samples of online and print advertising from several years and a statistical record of tourists from 2003.
The Registrar reports that the Domain Name
The Respondent “Discover Jordan” is, according to the Response and the 2016 notarial warning letter, Discover Jordan Tours, a Jordanian limited liability company based in Amman, Jordan. It operates a multipage, English-language website at “www.discoverjordan.com” (the “Respondent’s website”). The Domain Name
The Respondent Laura Leader is not further identified in the Response and is not mentioned on the Respondent’s website. Ms. Leader and Discovery Jordan Tours are referred to hereafter collectively as the “Respondent”.
The Panel notes that, based on screenshots from the Internet Archive’s Wayback Machine, the Domain Name has redirected to the Respondent’s website ever since the Respondent registered the Domain Name in 2012, either at the current address or at “www.discoverjordan.co”.
The Domain Names
The Complainant attaches a screenshot from GoDaddy Auctions showing that in November 2021 the Domain Name
The Complainant’s representative sent a notarial warning letter dated June 16, 2016 to the Respondent demanding the transfer of the Domain Name
The Complainant asserts that the Domain Names are all identical or confusingly similar to its PETRA BY NIGHT mark, in which it claims common law rights, as well as confusingly similar to the registered figurative trademark in which those words are the dominant element. The Complainant contends that the Respondent has neither permission to use its mark nor other rights or legitimate interests in the Domain Names, which have been used only to redirect Internet users to the Respondent’s website at “www.discoverjordan.com”, a business that does not have a corresponding name, or to a parking page with third-party PPC advertising.
The Complainant infers bad faith because the Complainant’s trademark PETRA BY NIGHT program is well-known since 1998, the Respondent organization is based in Jordan, the parties are both in the Jordanian tourism business, and the Respondent “must” therefore have had the Complainant’s trademark in mind when registering Domain Names with the same words and in the same order as in the trademark. The Complainant argues that the use of the Domain Name
In its Supplemental Filing, the Complainant states (incorrectly) that it is “undisputed” that it has common law rights in PETRA BY NIGHT as a mark and then proceeds to furnish additional data from 2006 through 2021 concerning sales and promotion of PETRA BY NIGHT tours. The Complainant replies to the Response concerning multiple tour operators participating in the PETRA BY NIGHT events by saying that the Complainant is the organizer and receives a commission on ticket sales by other operators, including the Respondent.
B. RespondentThe Respondent accepts the Complainant’s Jordanian registration of a figurative trademark from 2016 but observes that this came more than four years after the Respondent’s Domain Name registrations and asserts that “Petra by Night” is a generic term for an event operated by multiple travel agencies in Wadi Musa, Jordan, including the Respondent. The Respondent points out that one of the Complainant’s attachments is a flyer advertising the “Petra By Night” event and referring not only to Zaman Tours (the Complainant) but also two others, La Beduina Tours and Petra Moon Tours. The Response attaches a 2014 obituary of Wendy Botham of Petra Moon Tours, crediting her with being “part of the initiative to establish the ‘Petra by Night,’ a two-hour evening walk on a path lit romantically with candlelight into Petra”, inspired by the candellarias of her native Texas. The Response attaches an extract from the Jordanian Commercial Register showing that the entry for the Complainant was amended on September 8, 2013 (after the Domain Name registrations) to add the activity of “Petra Program in night”. The Respondent argues that none of the Complainant’s evidence points to exclusive use of the term “Petra by Night” or establishes an actual record of the Complainant’s sales and advertising under that name to establish secondary meaning as required by the Policy. Instead, the Respondent contends, the term “Petra by Night” remains descriptive and in common use.
The Respondent argues as follows regarding the second element of the Complaint, its claim to rights or legitimate interests:
“The Respondent before any notice of the dispute was using the petrabynight.com domain name. It has taken the Complainant nine years from the registration of the domain names to lodge this Complaint and the Respondents have legitimately used the domain names during that time.”
The Respondent contends that there is no bad faith because the words “Petra by Night” describe “an event which is not under the exclusive control of the Complainant” that is run by multiple companies; the term is not a “distinctive identifier”. “Therefore, the Respondent is perfectly within its rights to register and use domain names which incorporate such a term.” The Complainant’s design logo featuring the words was not registered until four years after the Respondent registered the Domain Names, using one of them to redirect to its website advertising, among other things, “Petra by Night” tours. The Respondent argues that it was under no obligation to reply to the Complainant’s “warning letter” in 2016 when the Complainant finally registered its design trademark, as the Complainant still had no exclusive rights to the term “Petra by Night” used by the Respondent and other tour operators.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a 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”.
6.1 Preliminary Matter: Supplemental FilingsThe Complainant submitted a supplemental filing, and the Respondent objected that the Complainant had not demonstrated “exceptional circumstances” warranting such a submission.
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
As the Complainant intended from the outset to rely on common law as well as registered trademark rights, the Complainant should have included sufficient evidence with the Complaint to support its claim to such rights. It is also no surprise that the Respondent would argue the descriptive nature of the term corresponding to the Domain Names and the Complainant’s claimed word mark. The Panel does not find in the Response material new evidence or unexpected arguments that warrant a reply brief and an opportunity to supplement the record submitted with the Complaint. Accordingly, the Panel denies the Complainant’s request to consider its supplemental filing.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds Jordanian trademark registrations for figurative marks in which the words PETRA BY NIGHT are the dominant feature.1 The Domain Names all include exactly that string, omitting the spaces that cannot be included in URL addresses in the Domain Name System (DNS) for technical reasons. As usual, the generic Top-Level Domains (“gTLDs”) “.com”, “.net”, and “.org” and the country code Top-Level Domain (“ccTLD”) “.co” are disregarded as a standard registration requirement. See id. section 1.11.2.
Therefore, the Panel finds that all four Domain Names are confusingly similar to the Complainant’s registered PETRA BY NIGHT trademarks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights, a lack of permissive use, and the absence of an associated website at the time of this proceeding. This shifts the burden of production to the Respondent.
The Response demonstrates use of the Domain Name
The Respondent has not produced evidence of use of the other three Domain Names apart from the Registrar’s parking for PPC advertising, which does not establish rights or legitimate interests. See WIPO Overview 3.0, section 2.9. Hence, the Complainant prevails on the second element of the Complaint with respect to the Domain Names
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In 2012, when it registered the four Domain Names, the Respondent could not have targeted the Complainant’s figurative trademark; the Complainant does not claim to have created that mark so early and did not apply to register it until 2016. Instead, the Complainant argues that by 2012 the term PETRA BY NIGHT was distinctive, well-known, and exclusively associated with the Complainant. The Complainant asserts that the Respondent must have intended to mislead Internet users for commercial gain or alternatively induce the Complainant to purchase the Domain Names from the Respondent for amounts far in excess of the Respondent’s out-of-pocket costs.
The Complainant’s arguments depend on establishing common law rights in a descriptive term by 2012. As explained in the WIPO Summary 3.0, section 1.3:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
The Complainant has not produced substantial evidence of advertising and sales by 2012 associated with PETRA BY NIGHT as a mark, particularly a mark exclusively associated with the Complainant as opposed to a description of an officially sanctioned event open to visitors brought in as well from the official visitors’ center, other tourist agencies, and even hotels. What the Complainant has established is that it organized and obtained permission from the relevant authorities to operate “Petra by Night” events at the historic Petra sites. There is nothing in the record that indicates that the Complainant obtained exclusive rights to operate such tours or events and became distinctively associated with them as the organizer, sponsor, or host. To the contrary, there are several indications that these events are promoted by others as well, in cooperation with the Complainant and the authorities, without necessarily mentioning the Complainant or its registered trade name (which is ZAMAN TOURS, not PETRA BY NIGHT). Nowhere on the Complainant’s website or promotional materials is the term “Petra by Night” published with symbols indicating trademark rights, except where the logo with the lighted candle image is displayed, which is the registered trademark.
The Response demonstrates that the term “Petra by Night” is descriptive and used by others. Several tour operators including the Respondent advertise “Petra by Night” activities and have done so for years. The Panel notes that the term produces numerous results that have nothing to do with the Complainant as a query on popular search engines. Perhaps most significant is the page on “Petra by Night” on the official English and Arabic “Visit Petra” website of the Petra Development and Tourism Region Authority at “www.visitpetra.jo”. Although the Authority furnished a letter recently recognizing the Complainant as the “founder and organizer” of the Petra by Night program, the Authority’s Petra by Night web page does not mention the Complainant at all. It gives details about the “Petra by Night” event and says that “[t]ickets can be bought at the Visitor Centre shops, local tour agencies in Petra or at your hotel reception.” This does not suggest that even today visitors necessarily associate the Complainant with “Petra by Night” events.
On this record, the Panel does not find that the Complainant has met its burden of establishing the probability that the Complainant had common law rights in the inherently descriptive term “Petra by Night” in 2012 when the Respondent registered the Domain Names or that the Respondent anticipated the acquisition of such rights in registering the Domain Names.
Accordingly, the Panel concludes that the Respondent prevails on the second element of the Complainant with respect to the Domain Name
To the extent the Complainant contends it would have a grievance in relation to its claimed exclusive right to use such term flowing from its letter of authorization from the Petra Development and Tourism Region Authority, that would be something to advance with the relevant authority or in another forum.
7. DecisionFor the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: January 4, 2022
1 The Complainant also claims common law rights in PETRA BY NIGHT as a word mark. This is not necessary to determine for purposes of the first Policy element but is discussed below in connection with the third element, bad faith.