The Complainant is Novomed Centers L.L.C, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Nova Medical Center, United Arab Emirates, represented by Saba & Co. IP, Lebanon. 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 19, 2021. On May 19, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On May 20, 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 May 21, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2021. The Respondent filed a Response on June 10, 2021 to which the Center acknowledged receipt. The Center appointed Nayiri Boghossian as panelist in this matter on June 17, 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 was founded in 2016 in Dubai under the trade name Novomed Centers LLC. The Complainant is a group of clinics and hospitals in the United Arab Emirates offering a variety of medical and health services. The Complainant uses the domain name The Complainant owns a number of trademark registrations for the trademark NOVOMED نوفومدBY DR. MAX with a design of a watch and stylized letters. For example, United Arab Emirates trademark registration No. 298331 filed on September 12, 2018 and registered on February 5, 2019 (the Panel notes that the name of the trademark appears as being “Novomed Centers (in English and Arabic) by Dr. Max” but this name was modified to reflect the trademark as described above, i.e. NOVOMED نوفومدBY DR. MAX with a design of a watch and stylized letters), Qatar trademark registration No. 135826 filed on November 24, 2019 and registered on September 8, 2020, Oman trademark registration No. 133200 filed on November 24, 2019 and registered on June 7, 2020, Kuwait trademark registration No. 1621497 filed on November 20, 2019. The publication of the trademark for opposition in the United Arab Emirates includes the disclaimer that the protection covers the trademark in its entirety and that there is no exclusive right over each of the words of which the trademark is constituted. The Respondent is a medical center founded in Abu Dhabi, United Arab Emirates, in 2011 and operating under the trade name Nova Medical Center. The Respondent registered the disputed domain name on March 13, 2013. The Respondent is using the disputed domain name to resolve to a website through which it offers services in the medical field. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has registered the trademark NOVOMED BY DR. MAX in English and Arabic with a design in a number of countries and its trademark has become known for healthcare services and is identified by the public as distinguishing the Complainant’s services and activities. The trademark has acquired distinctiveness and a secondary meaning due to its extensive use, marketing and registration. The Complainant and its trademark are widely present in social media and has established unregistered or common law trademark rights as well. The disputed domain name reproduces the Complainant’s trademark in its entirety replacing the letter “a” with the letter “o”, which does not eliminate confusing similarity. The addition of the country code Top Level Domain (“ccTLD”) “.ae” should typically be ignored when assessing confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant nor was authorized to use its trademark. The Complainant has been using its trademark years prior to the registration of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The disputed domain name was registered merely to mislead consumer by creating the impression of association with the Complainant in order to divert Internet users. The Respondent 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 offering services competing with those of the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is in fact using similar layout and content. The Respondent must have been aware of the Complainant and its trademark as they both operate in the same market/country. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant and its trademark as it is a well-known trademark and has been in use since 2014. The Respondent is trying to attract Internet users to its website by creating the likelihood of confusion with the Complainant’s trademark. This is reinforced by the fact that similar layout and content is being used by the Respondent. B. Respondent The Respondent argues that the disputed domain name is the name of the Respondent as it consists of the term “nova” and the term “med”, which is an abbreviation of the word “medical”. It asserts that the disputed domain name is registered in 2013 and the trade name of the Respondent was registered as of 2011. The term “nova” is commonly used as part of trademarks. The Complainant’s trademark registration in the United Arab Emirates includes a disclaimer on the words that the trademark consists of when used separately. The protection is granted to the trademark as a whole, which demonstrates that neither “novo” nor “novomed” are considered distinctive. The word “novo” means new whereas “nova” means a star. The Respondent asserts that it established its business in 2011 and has been offering services since then while actively conducting advertisement and marketing activities. The Respondent registered the disputed domain name, which reflects its own trade name. The Respondent asserts that it established its business in 2011and has been actively marketing it and offering its services. The Respondent registered the disputed domain name, which reflects its trade name. The Complainant alleges that it has registered its domain name The Complainant owns a number of trademark registrations for the trademark NOVOMED نوفومدBY DR. MAX in stylized letters and with a design of watch. The publication of the trademark for opposition in the United Arab Emirates, where both parties are domiciled, includes the disclaimer that the protection covers the trademark in its entirety and that there is no exclusive right over each of the words of which the trademark is constituted. Such disclaimer means that the Complainant does not have exclusive rights in the word “novomed” at least as far as the United Arab Emirates is concerned. The Qatar registration shows that the words “Dr. Max” are disclaimed if used separately. The Panel is of the view that the protection granted to the Complainant’s trademark covers the entirety of the trademark, i.e., the words “novomed” in English and Arabic together with the words “Dr. Max” (all in stylized letters) and the watch design. The Complainant did not submit any trademark registration showing that it has protection for the term “novomed” alone. As such, the Complainant has not established any enforceable rights in the word “novomed” alone. In any case, even if the Complainant were successful in establishing any enforceable rights in the word “novomed”, the final outcome would have not been any different, i.e., the Complainant would have still lost the claim as the other elements have not been met as set out below. The Complainant argues that it has unregistered trademark rights as well. To establish such rights, the Complainant must prove secondary meaning. Evidence required to demonstrate such secondary meaning includes length of use of the relevant trademark, value of sales, consumer surveys and media recognition. (See Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083). The need to present significant evidence with respect to the secondary meaning becomes even more important in a case like this one where there has been a disclaimer imposed on the words of which the trademark is constituted, at least as far as the United Arab Emirates is concerned. The Complainant did not submit the required evidence to establish any secondary meaning. With respect to confusing similarity, the stylized and design elements of a trademark are not reproducible in a domain name and therefore need not be considered when assessing identity or confusing similarity. There should be a comparison of the textual element solely. With regard to the United Arab Emirates trademark, textual content which has been expressly disclaimed in a complainant’s relevant trademark registration is generally disregarded by panels when assessing a domain name’s identity or confusing similarity (See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031). Moreover, while the Panel believes that the protection granted to the Complainant’s trademarks covers the entirety of the trademarks, even if the Panel ignores the stylized letters and the watch design and focuses only on the textual elements, the Complainant did not submit any trademark registration showing that it has protection for the term “novomed” alone. Therefore, although the disputed domain name consists of the word “novamed”, which is similar to the word “novomed”, the Complainant does not have enforceable rights in the word “novomed” alone. Consequently, the Panel finds that the Complainant has not satisfied paragraph 4(a)(i) of the Policy. The Panel does not have to examine the remaining elements given the Complainant’s failure in satisfying the first element. However, examining the remaining elements reinforces the conclusion reached by the Panel on the denial of the Complaint. B. Rights or Legitimate Interests The disputed domain name consists of the word “novamed”, which combines the word “nova” and “med”. The Respondent’s trade name is Nova Medical Center. Hence the use of the word “novamed” is simply the use of the first word in the Respondent’s trade name and the abbreviation of the second word of its trade name. Therefore, the Respondent has shown that it has been known by the name used in the disputed domain name. Furthermore, the disputed domain name resolves to a website through which the Respondent offers its services. Such use constitutes a bona fide offering of services. The Complainant contends that a similar layout and content of its website is being used by the Respondent. Looking at the Complainant’s website, one does not notice any special features with respect to the layout or the content. It is therefore very difficult to conclude that the website of the Respondent imitates any of the features of the Complainant’s website. In fact, the websites of both the Complainant and the Respondent have nothing special about them and are similar to many of the websites of providers of health services in the United Arab Emirates. Consequently, the Panel finds that the Respondent has established rights and legitimate interests in the disputed domain name and as such the Complainant failed to satisfy paragraph 4(a)(ii) of the Policy. C. Registered or is Being Used in Bad Faith The Respondent was founded in 2011 and registered the disputed domain name in 2013. The Complainant was founded in 2016 and its application for registration of the trademark in the United Arab Emirates was made in 2018, which is its earliest registration. The Respondent’s incorporation, use of the words “nova” and “med” in reference to the term “medical” as part of its trade name, and the registration of the disputed domain name all precede the creation of the Complainant and the registration of its trademark. Accordingly, when the Respondent registered the disputed domain name, it could not have been aware of the Complainant’s existence or its trademark. Therefore, it is not possible to conclude that there has been a bad faith registration. (See Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827) The Panel wishes to point out that although the Complainant alleges using its domain name since 2002, it did not produce any evidence to that effect. On the contrary, the evidence produced by the Respondent seem to show that the domain name was being used as of 2017. Additionally, even if the Complainant had registered and used its domain name in 2002, it is difficult to imagine that the domain name would have resolved to a website, which provides information about the Complainant’s activities as the Complainant only started operating in the United Arab Emirates in 2016. Accordingly, there was no way for the Respondent to know what type of activities the Complainant planned to conduct. The Respondent uses the disputed domain name to promote its services and business. Therefore, the Panel finds that there is no bad faith use by the Respondent. Accordingly, the Panel finds that the Complainant failed to satisfy paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Nayiri Boghossian
Panelist
Date: June 21, 2021
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