The Complainant is MILIPOL of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Milipol Int of Abu Dhabi, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (.aeDA). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2016. On November 16, 2016, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On November 17, 2016, AE Domain Administration (.aeDA) 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 UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 16, 2016.
The Center appointed Alistair Payne as panelists in this matter on December 29, 2016. The Panel finds that it was properly constituted. Each member of 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, based in France, organises trade shows and exhibitions related to police equipment, civil and military security, and related services. It has been using the MP MILIPOL trade marks and trade name MILIPOL since at least as early as 1995. The Complainant owns various trade mark registrations, but in particular combined word and logo mark registration No. 6640 for MP MILIPOL in the United Arab Emirates which was registered on October 12, 1996 and is protected from its filing date of October 29, 1995. The Complainant also owns various domain name registrations including , , , , , , , , , , and .
The disputed domain name was first registered on August 14, 2006. 5. Parties’ Contentions A. Complainant
The Complainant says that its MILIPOL trade name and trade mark are well reputed as a result of its organisation of the MILIPOL Paris and MILIPOL Qatar events which are worldwide well-known exhibitions for internal state security. It says that MILIPOL Asia-Pacific is the Premier counter terrorism and security event in the Asia Pacific and is planned in Singapore from April 4 to 6, 2017 and that the MILIPOL Paris show in 2015 attracted 24,056 visitors (with 45 per cent from outside France and from 143 different countries) and 949 exhibitors from 55 countries. The Complainant says that it advertises in publications in its highly specialized field, such as Jane’s, Special Operations Report and the Small Arms Review and has been an exhibitor and visitor at trade exhibitions in this field, such as Shot Show, SOFIC, AUSA, IACP, Govsec, and Urban Shield.
The Complainant notes that it owns numerous registrations for its MP MILIPOL trade mark and for its MILIPOL trade name as well as numerous domain names that incorporate its MILIPOL mark, all as noted above. It submits that the letters “MP” in trade mark registration 6640 for MP MILIPOL in the United Arab Emirates is a descriptive abbreviation that stands for “military police” and that the MILIPOL element of its mark is wholly contained in the disputed domain name and is therefore identical or confusingly similar to its MP MILIPOL trade mark registration, or to its MILIPOL trade name.
The Complainant submits that the Respondent does not have rights or legitimate interests in the disputed domain name. It says that its MILIPOL mark has no other meaning than as the Complainant’s trade mark, that the Complainant has never granted any license to the Respondent to use the MILIPOL name or mark or any derivation thereof and that the Respondent has not been commonly known by the MILIPOL name at any relevant time and owns no trade mark registration for MILIPOL. The Complainant also asserts that the Respondent’s use of the disputed domain name is not a legitimate fair use or a noncommercial use.
In addition the Complainant says that the Respondent created the disputed domain name many years after the Complainant’s first use of the trade mark MILIPOL and almost fifteen years after the Complainant filed its trade mark in the United Arab Emirates. It says that as the disputed domain name does not resolve to a real and effective website it can be concluded that the Respondent is not making a bona fide offering of goods and services in connection with the disputed domain name.
As far as registration in bad faith is concerned, the Complainant says that its MILIPOL trade mark was used and the MP MILIPOL trade mark was registered before the disputed domain name was registered. It submits that the word “milipol” does not have any ordinary meaning in the English language and it is therefore unlikely that the Respondent was unaware of the Complainant’s trade mark rights when it registered or acquired the disputed domain name.
The Complainant notes a prior UDRP decision, MILIPOL v. Milipol International,WIPO Case No. D2012-0387, involving what appears to be the same respondent. In that case the respondent had registered the domain names and , and the panel ordered the transfer of the disputed domain names to the Complainant. The Complainant says that the Respondent’s registration of the disputed domain name is therefore in bad faith and submits that the Respondent either registered the disputed domain name or acquired it primarily for the purpose of disrupting the business of the Complainant and for preventing the Complainant from reflecting its trade mark in a corresponding country code Top-Level Domain (“ccTLD”) name.
As far as use in bad faith is concerned, the Complainant says that the Respondent does not associate the disputed domain name with a good faith offering of goods and services since it does not resolve to a real and effective website. It further submits that the Respondent’s passive use of the disputed domain name constitutes bad faith in all the circumstances of the case and as a result it can be said that the Respondent has used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns a combined word and logo mark registration 6640 for MP MILIPOL in the United Arab Emirates which was registered on October 12, 1996 and is protected from its filing date of October 29, 1995. Although a combined word and logo mark, the key and most prominent and distinctive element of the mark from a visual and aural perspective is the word mark MILIPOL and the disputed domain name wholly contains the Complainant’s MILIPOL mark with no distinguishing element before the ccTLD “.ae”. As a result the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark and the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent does not have rights or legitimate interests in the disputed domain name. It says that its MILIPOL mark has no other meaning than as the Complainant’s trade mark, that the Complainant has never granted any licence to the Respondent to use the MILIPOL name or mark or any derivation thereof and that the Respondent has not been commonly known by the MILIPOL name at any relevant time and owns no trade mark registration for MILIPOL. The Complainant also asserts that the Respondent’s use of the disputed domain name is not a legitimate fair use or a noncommercial use and that it is not making a bona fide offering of goods and services in connection with the disputed domain name as it does not resolve to a real and effective website.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that this case has not been rebutted by the Respondent. For this reason and in addition for the reasons set out under Part C below, the Panel finds that the Complaint succeeds under this element of the Policy. C. Registered or is Being Used in Bad Faith
Although the disputed domain name was originally created in 2006 it appears that the Respondent was registered as its owner in July 2016. This is many years after the registration of the Complainant’s trade mark in the United Arab Emirates where the Respondent is located and the Panel notes that the Complainant has provided evidence that indicates that it had made considerable use of its mark and trade name in various countries worldwide by 2016. The MILIPOL element of the Complainant’s registered trade mark and its MILIPOL trade name is not a common English word and appears to be a coined word that is quite distinctive. In addition, the Panel notes that the Respondent has previously registered the domain names and both containing the Complainant’s MILIPOL mark and in MILIPOL v. Milipol International, supra, the panel ordered the transfer of the disputed domain names in that case to the Complainant. The Panel finds in these circumstances that it is therefore more than likely that the Respondent had knowledge of the Complainant’s use of the trade name or trade mark MILIPOL at the date of registration of the disputed domain name.
Under paragraph 4(b)(ii) of the Policy evidence of registration and use of a domain name in bad faith can be inferred where a domain name has been registered in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct. In this case the Respondent has previously registered domain names containing the MILIPOL trade name or mark and has been found by a prior panel, as noted above, to have done so in bad faith. The Respondent is not in the instant case using the disputed domain name to resolve to a website at which it is offering goods or services and there does not appear to be any other credible explanation for the Respondent’s second attempt to register a domain name wholly incorporating the Complainant’s MILIPOL trade name or trade mark. The Panel infers that the Respondent has sought to register the disputed domain name in order to prevent the Complainant from reflecting the MILIPOL trade name and mark in a corresponding domain name in terms of paragraph 4(b)(ii) of the Policy and under the totality of the circumstances as reflected at paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and the Complaint also succeeds under this element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Alistair Payne
Panelist
Date: January 10, 2017
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