The Complainant is Zameen Media (Private) Limited, Pakistan, represented by Khalid A. Altamimi Advocates & Legal Consultants, United Arab Emirates (“UAE”).
The Respondent is Rashed Saeed Saif Aleter Aldhanhani, UAE. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2021. On January 13, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On January 14, 2021, 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 January 18, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2021. The Center received an email communication from a person identifying himself as the Respondent on February 7, 2021. On February 8, 2021, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Steven A. Maier as sole panelist in this matter on February 11, 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 operates an online real estate portal under the name “Zameen.com”. It is based in Pakistan but also does business in the UAE via a dedicated URL at “www.zameen.com/uae”. The Complainant is the owner of various trademark registrations that comprise or include the term “zameen”, including for example the following: - Pakistan trademark number 334698 for a word and design mark ZAMEEN.COM PAKISTAN’S NO. 1 PROPERTY WEBSITE, registered on February 20, 2013, in International Class 42 The disputed domain name was owned by the Complainant from March 14, 2017, until its expiry on March 13, 2018. It was registered by the Respondent on October 25, 2020, according to the information provided by .aEDA to the Center. According to evidence submitted by the Complainant, the Respondent is one of two partners in a UAE trading entity named “Zameen.ae LLC FZCO”, license number 13776, that license having been issued on December 20, 2018. The second partner in this entity is recorded as Abdul Manan Mohammad Ishak Shaikh, a Pakistani national. The disputed domain name has resolved to a website at “www.zameen.ae”. The website is headed “Zameen.ae” with a “globe” logo and advertises commercial and residential real estate in the UAE. 5. Parties’ Contentions A. Complainant The Complainant submits that it has offered online real estate services under the name “Zameen.com” since 2006. It states that it was the first, and is the largest, such portal in Pakistan and that it has over 3,000 employees and a presence in 32 cities in Pakistan. It claims 26 million unique users of its website each month. The Complainant states that it has a significant commercial presence in the UEA where there are 1.2 million Pakistani residents, constituting almost 13% of the total UAE population. The Complainant provides evidence of five real estate projects with which it is involved in Dubai. The Complainant submits that, as a result of these matters, it owns a distinctive trademark ZAMEEN, which has been used extensively in Pakistan and the UAE in connection with real estate services. The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It states that the disputed domain name reproduces its ZAMEEN trademark in its entirety, with the addition only of the country code Top-Level Domain (“ccTLD”) “.ae”, which is to be disregarded for the purposes of comparison. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use the ZAMEEN trademark, that the Respondent has no prior rights in that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges (as explained further below) that the Respondent was aware of the Complainant’s name and trademark when it registered the disputed domain name and that it has operated its website with the deliberate intention of diverting the Complainant’s customers. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that, after the Respondent’s registration of the disputed domain name, the Respondent’s business partner, Mr Shaikh, contacted a representative of Bayut Web Publishing (which the Panel has inferred represents the Complainant). The Complainant produces a LinkedIn message dated September 24, 2019, stating: “I noticed that Bayut tried to file the trademark for Zameen.ae. I am in fact a big fan of you and your brothers, the way you guys are operating business is an example for Pakistani entrepreneurs. Please can we sit and sort this out amicably?” The Complainant submits that there were further discussions with Mr Shaikh following this message, in which Mr Shaikh asked for a payment equivalent to USD 76,230 and a trading license for Zameen.ae LLC FZCO in return for the disputed domain name. The Panel notes, however, that the Complainant does not provide any evidence (e.g. by way of documents or a signed witness statement) in support of these further assertions. The Complainant contends that it is obvious from the above that the Respondent was aware of the Complainant’s business and ZAMEEN trademark when it registered the disputed domain name and that the Respondent has attempted to sell the disputed domain name to the Complainant for a sum far in excess of its actual costs of registration. The Complainant further alleges that the Respondent has used the disputed domain name for the purpose of a real estate portal website which is headed up with the ZAMEEN trademark and offers similar services to those found on the Complainant’s website. The Complainant states that the Respondent includes a toll-free contact number on this website, namely “800 ZAMEEN 926336” which is similar to the Complainant’s own toll-free number, “0800 ZAMEEN 92633” of which the final component is identical but for the additional number “6”. The Complainant submits that it is clear from these circumstances that the Respondent is intentionally attempting to divert the Complainant’s customers to its own website and telephone number. The Complainant requests the transfer of the disputed domain name. B. Respondent The Center received an email communication purportedly from the Respondent on February 8, 2021, but from an email address different than the one confirmed by .aeDA as belonging to the Respondent. The Respondent’s email states that the allegations in the Complaint are false and that the Respondent had never asked the Complainant for any payment. Instead, the Respondent asserts that Bayut Web Services has approached the Respondent on several occasions about buying it out. The Respondent adds that it carried out a background check before registering its UAE company and that there was no relevant trademark at that time. The Respondent states that it is in touch with a UAE law firm and “will get back to you.” However, no further submission was received from or on behalf of the Respondent. The Panel directs in the circumstances that the Respondent’s communication above shall stand as its Response in this proceeding. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 6(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. Identical or Confusingly Similar The Complainant is the owner of a UAE trademark for the mark ZAMEEN. The disputed domain name is identical to that trademark, ignoring the ccTLD, which the Complainant correctly says is to be disregarded for the purposes of comparison. While the Complainant’s UAE trademark was registered after the disputed domain name, this does not prevent a relevant finding under paragraph 6(a)(i) of the Policy, which is intended to establish only that the Complainant has good standing to bring the proceeding. The Panel also notes the existence of the Complainant’s Pakistan trademark, ZAMEEN.COM PAKISTAN’S NO. 1 PROPERTY WEBSITE, registered in 2013, where the element “zameen” is featured prominently in bold and placed above the line reading, “Pakistan’s No. 1 Property Website”. The Panel finds the term “Zameen” to be the dominant and distinctive element of that trademark and finds therefore that the disputed domain name is confusingly similar to that trademark. The Panel finds in the circumstances that the disputed domain name is respectively identical and confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant cannot meet the requirements of paragraph 6(1) of the Policy if the Respondent is found to have rights or legitimate interests in respect of the disputed domain name. In this case, the Respondent registered the disputed domain name on a date after March 20182 , established a UAE trading entity “Zameen.ae LLC FZCO” in December of that year, and has since operated a website at “www.zameen.ae”, which appears on its face to offer genuine real estate services. The question for the Panel in these circumstances is whether the Respondent’s website represents a bona fide commercial venture, operating under a name which is only coincidentally the same as that of the Complainant, or whether the Respondent’s registration and use of the disputed domain name is in fact an attempt to “target” the Complainant’s trademark and to take unfair advantage of its reputation and business goodwill. On careful consideration of the parties’ submissions in this case, the Panel concludes on balance that the Respondent’s website does not constitute a bona fide commercial venture and that it attempts instead unfairly to target the Complainant’s trademarks. The Panel reaches this conclusion principally for the following reasons. First, the Panel has regard to the Respondent’s business partner’s LinkedIn message to the Complainant’s representative, stating among other matters: “I am in fact a big fan of you and your brothers…”. Considering the business relationship and association with the Respondent, the Panel accepts this as evidence that the Respondent likely knew of the Complainant and its trademark, and while not conclusive that the Respondent knew this before its registration of the disputed domain name, the Panel finds it likely in all the circumstances that this was the case. The Panel accepts the Complainant’s evidence, which is supported by the Respondent’s business partner’s LinkedIn message, that its ZAMEEN trademark had a not insignificant business reputation in the UAE as well as in the Complainant’s principal territory, Pakistan. In these circumstances, the Panel finds it highly significant that the Respondent has offered no explanation for its choice of the name ZAMEEN in connection with its purported business. While it submits that there was no registered UAE trademark for that name at the material time, that does not mean that the Complainant was without unregistered rights in that mark and that the Respondent was free to adopt it for similar services to those for which the Complainant was known. The Panel infers in the circumstances that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and for the purpose of taking unfair advantage of the Complainant’s reputation and goodwill in that mark. The Panel further finds that the disputed domain name is inherently misleading, in that it is liable in itself to confuse a significant number of Internet users into believing that it is owned, operated or otherwise associated with the Complainant, and therefore constitutes an impersonation of the Complainant. In the light of the Panel’s conclusions that the Respondent is not using the disputed domain name in connection with a bona fide commercial offering and that the disputed domain name is inherently misleading, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered or is Being Used in Bad Faith The Panel repeats its findings referred to above, namely that the Respondent registered and has used the disputed domain name in the knowledge of the Complainant’s trademark ZAMEEN and with the intention of taking unfair advantage of the Complainant’s goodwill in that trademark. The Panel accepts the Complainant’s contentions that that the Respondent has used the disputed domain name and associated website in an attempt to confuse members of the public into believing that website is operated by or associated with the Complainant. One of the factors that the Panel takes into account is the similarity in the parties’ toll-free numbers identified by the Complainant: while the Panel does not have evidence of how these numbers are allocated or operated, and also presumes that the Complainant’s number relates to Pakistan and the Respondent’s to the UAE, the close similarity between the Complainant’s number “0800 ZAMEEN 92633” and the Respondent’s number “800 ZAMEEN 926336” is difficult to dismiss as coincidence. The Panel determines in the circumstances that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 6(b)(iv) of the Policy). The Panel also considers it likely on balance that the Respondent took the opportunity to register the disputed domain name, which had previously been owned by the Complainant, in the hope of using it to exercise financial leverage over the Complainant, e.g. by offering it for sale to the Complainant at an inflated sum (paragraph 6(b)(i) of the Policy). This inference is supported by the Respondent’s business partner’s approach to the Complainant in September 2019, against the background of its use of the disputed domain name for a misleading website as described above. The Panel finds in the circumstances that the disputed domain name has been registered and is being used in bad faith. 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, Steven A. Maier 1 This trademark is registered in the name of Bayut Web Publishing FZ-LLC. However based on the evidence contained in the case file the Panel is prepared to infer that the trademark was registered and is held on behalf of the Complainant. 2 While .aEDA records the disputed domain name as having been registered on October 25, 2020, it is evident from matters including Mr Shaikh’s LinkedIn message dated September 24, 2019, that the Respondent had at least an indirect interest in the disputed domain name before that date.
- UAE trademark number 309942 for the word mark ZAMEEN, registered on August 14, 2019, for services including real estate agency services in International Class 361
I just opened Zameen.ae last year and never intended to damage your business.
Panelist
Date: February 16, 2021
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