The Complainant is Almarai Company, Saudi Arabia, represented by Talal Abu Ghazaleh Legal (TAG-LEGAL Egypt), Egypt.
The Respondent is Mohammed Babar, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2020. On June 22, 2020, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On June 23, 2020, 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 July 6, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2020. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 28, 2020. The Center appointed Luca Barbero, Nick J. Gardner, and Emre Kerim Yardimci as panelists in this matter on September 2, 2020. 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. On September 10, 2020, the Complainant filed a Supplemental Filing. 4. Factual Background The Complainant is a Saudi multinational dairy company founded in 1977 and headquartered in the Kingdom of Saudi Arabia. Over the years, the Complainant diversified its product portfolio to include juices, bakery, poultry, and infant formula under the brand names ALMARAI, L’USINE, 7DAYS, ALYOUM, and NURALAC and also operated successful joint ventures with Chipita and PepsiCo. The Complainant is ranked as the number one Fast Moving Consumer Goods (FMCG) brand in the Middle East and North Africa (MENA) region and the market leader in the most of its categories across the Gulf Cooperation Council (GCC). The Complainant is the owner of numerous trademark registrations for ALMARAI, including the following, as per trademark certificates submitted as annexes to the Complaint: - United Arab Emirates trademark registration No. 177061 for ALMARAI (figurative mark), filed on July 25, 2012 and registered on November 5, 2014, in international class 31; - United Kingdom trademark registration No. UK00002504557 for ALMARAI (figurative mark), filed on December 10, 2008 and registered on April 10, 2009, in class 5; - Egypt trademark registration No. 245739 for ALMARAI (figurative mark), filed on May 12, 2010 and registered on October 9, 2019, in international class 29; - Egypt trademark registration No. 362152 for ALMARAI (figurative mark), filed on December 14, 2017 and registered on August 20, 2019, in class 29; - Kingdom of Bahrain trademark registration Nos. 81658, 81659, 81660 and 81661 for ALMARAI (figurative mark), registered all on May 27, 2010, respectively in classes 5, 29, 30 and 32; - Kingdom of Bahrain trademark registrations No. 95826 for ALMARAI (figurative mark), registered on January 22, 2013, in international class 31; - India trademark registration No. 2366220 for ALMARAI (figurative mark), registered on July 19, 2012, in class 5; - India trademark registration No. 2366227 for ALMARAI (figurative mark), registered on July 19, 2012, in class 30. The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name The Complainant highlights that the use of the term “arabia” only serves to increase the level of confusion since, due to the notoriety of the Complainant’s trademark, Internet users might believe that the disputed domain name would be in some way associated with the Complainant. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent was in no way authorized nor licensed by the Complainant to use the trademark ALMARAI or to register the disputed domain name incorporating its well-known trademark and trade name. The Complainant contends that the Respondent is also in no way affiliated with the Complainant and that, upon registering the disputed domain name, the Respondent intentionally incorporated the Complainant’s trademark with the intent to create a connection with the Complainant and take unfair advantage of its well-known trademark. The Complainant further underlines that the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name resolves to a website promoting services which compete directly with the Complainant’s services and which could be easily confused with those offered by the Complainant. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering that i) it has been operating under the name ALMARAI since 1977; ii) the Complainant was established in 1991; iii) the trademark ALMARAI was registered in 1982; and iv) the domain name Moreover, the Complainant underlines that the use of the Complainant’s well-known trademark in its entirety also proves that the Respondent registered and is using the disputed domain name in bad faith. Lastly, the Complainant emphasizes that bad faith can also be inferred by the choice of the products and services offered at the disputed domain name, which directly compete with those offered by the Complainant. Thus, the selection by the Respondent, which is in no way connected to the Complainant, suggests that the disputed domain name has been registered with a deliberate intent to create an impression of an association with the Complainant and/or its licensees and to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to 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.” Paragraph 6(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered or is being used in bad faith. A. Preliminary procedural issue: Complainant’s Supplemental Filing No provision concerning supplemental filings are made in the Rules or Supplemental Rules, except at the request of the panel according to paragraph 12 of the Rules, which states the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case. According to paragraph 10 of the Rules, the panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the parties are treated with equality and that each party is given a fair opportunity to present its case. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), unsolicited supplemental filings are generally discouraged – unless specifically requested by the panel – and the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. Accordingly, UDRP panels generally accept supplemental filings only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated. See, along these lines, Welcomemat Services, Inc. v. Michael Plummer jr., MLP Enterprises Inc.,WIPO Case No. D2017-0481. In the case at hand, the Panel notes that the Complainant’s Supplemental Filing, sent to the Center after the Panel appointment, merely contains comments about the Respondent’s failure to respond to the Complaint. The Panel does not deem appropriate to admit such Supplemental Filing as it is unnecessary and does not add anything to the case, noting, however, that considering it would not have changed the outcome of the case. B. Preliminary issue: Nature of the Policy So far as the Policy is concerned the Panel notes that it is substantially similar to (though not identical to) the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) as adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The Panel will where appropriate apply principles that have been established in relation to the UDRP including with respect to the WIPO Overview 3.0 in determining this dispute. C. Substantive Matters: Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the figurative trademark ALMARAI based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes 4 to the Complaint. As highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, as stated in section 1.10 of the WIPO Overview 3.0, “to the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element”. In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademark ALMARAI as it reproduces the core of the Complainant’s figurative trademark, consisting of the denominative portion “almarai”, with the mere addition of the geographical term “arabia” and the cTLD “.ae”, which does not prevent a finding of confusing similarity. In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 6(a)(i) of the Policy. D. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 6(c) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous panel decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 6(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 6(a)(ii) of the Policy. In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 6(c) of the Policy for the following reasons. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name was confirmed by the Registrar, might be commonly known by the disputed domain name. The Panel also finds that the Respondent’s use of the disputed domain name to redirect Internet users to a website promoting alleged distribution services of food products under the name “Almarai Al Arabia” is apt to confuse Internet users as to the source or affiliation with the Complainant and its ALMARAI food products. In view of the foregoing and in the absence of a Response, the Panel finds that the Respondent’s use of the disputed domain name does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 6(a)(ii) of the Policy. E. Registered or is Being Used in Bad Faith For the purposes of paragraph 6(a)(iii), the following circumstances in particular but without limitation, if found by the panel to be present, shall be evidence of the registration or use of a domain name in bad faith: “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 ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As to the bad faith at the time of the registration, the Panel finds that, in light of the widely known character of the Complainant and its trademark ALMARAI in the dairy sector, especially in the Middle East, where the Respondent is based, and considering that the Respondent is apparently active in the food industry, the Respondent must have been aware of the Complainant’s prior trademark rights. Moreover, the Panel finds that, by pointing the disputed domain name to a website promoting distribution services of food products and failing to accurately disclose the absence of any relationship with the Complainant, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the trademark ALMARAI as to the source, sponsorship, affiliation or endorsement of its website and the products promoted therein according to paragraph 6(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is also using the disputed domain name in bad faith according to paragraph 6(a)(iii) 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 Luca Barbero Nick J. Gardner Emre Kerim Yardimci
Presiding Panelist
Panelist
Panelist
Date: September 17, 2020
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