WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dubizzle Limited BVI v. Ossama Ghazy

Case No. D2015-0047

1. The Parties

Complainant is Dubizzle Limited BVI of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.

Respondent is Ossama Ghazy of Mansoura, Egypt.

2. The Domain Name And Registrar

The disputed domain name <dubizzle.company> (the “Disputed Domain Name”) is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2015. On January 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2015. On February 1, 2015, Respondent requested a ten (10) day extension for Response. After receiving Complainant’s comments on this request, the Center extended the due date for Response until February 13, 2015. Respondent did not submit any response by the extended due date. Accordingly, the Center notified Respondent’s default on February 16, 2015.

The Center appointed Richard W. Page (the “Panel”) as the sole panelist in this matter on February 23, 2015. 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.

Respondent filed an informal communication with the Center on March 6, 2015, which the Panel has decided to consider.

4. Factual Background

Complainant is the sole owner of numerous trademarks including the “Dubizzle” name (the “DUBIZZLE Mark”), with trademark registrations in Saudi Arabia, Lebanon, Jordan and Algeria. Complainant’s Saudi Arabian trademark was registered July 1, 2013. In addition, Complainant has filed trademark applications which are in the final stages of registration in several countries, including Egypt where Respondent resides.

Complainant operates an online classifieds site, <dubizzle.com>, that enables users to buy and sell goods, including vehicles, real estate, tickets and electronics; solicit and offer services such as babysitting, event services, and repairs; design ads to post on the website; display ads to post on the website, display ads on profiles across social networking sites, such as Facebook; and search for jobs across numerous locations and industries. Job openings, residential property and automotive classifieds are among the most popular categories. Complainant and its subsidiary company “Dubizzle Middle East FZ-LLC” have registered domain names incorporating the DUBIZZLE Mark in numerous countries.

Founded in 2005 by J.C. Butler and Sims Whatley, Complainant is the Middle East and North Africa (“MENA”) region’s leading online classifieds and community portal. Complainant facilitates trade by providing an online marketplace where sellers can list items for sale and buyers can search listings and connect with sellers. In August 2013, Napers (also owner of the popular classified site OLX) acquired a 25% stake in Complainant, which was increased to 54% during 2014. In 2010, Complainant expanded in the MENA region. With a presence in 11 countries and over 21 cities, Complainant has over 8 million visitors to its website, viewing more than 290 million pages every month.

Complainant is followed by a large group of people working in the United Arab Emirates (“UAE”), of which 40% are Western expatriates and 20% are from MENA. Over 29% of the visitors come from Egypt where Respondent resides.

The DUBIZZLE Mark is in possession of substantial inherent and acquired distinctiveness, and the DUBIZZLE Mark and brand are well-recognized by consumers, industry peers, and the broader community where Complainant operates, namely in the countries and cities across the MENA region.

The Disputed Domain Name was registered March 19, 2014.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of the DUBIZZLE Mark, registered in Algeria, Jordan, Lebanon and in Saudi Arabia, and pending in numerous other countries. Complainant further contends that the dominant part of the Disputed Domain Name is identical to the DUBIZZLE Mark. The addition of the new generic Top-Level Domain name (“new gTLD”) “.company” does not distinguish the Disputed Domain Name from the DUBIZZLE Mark. Complainant alleges that given that Complainant is a company, the new gTLD contributes to the confusing similarity between the DUBIZZLE Mark and the Disputed Domain Name. The new gTLD indicates that the Disputed Domain Name might be connected to Complainant’s official company website.

Complainant has not found Respondent has any registered trademark or trade name corresponding to the Disputed Domain Name, nor anything that would suggest that Respondent has been using DUBIZZLE in any other way that would provide any rights or legitimate interests in the Disputed Domain Name. Nor has Complainant granted Respondent any license to use the DUBIZZLE Mark, in any way, including its use in a domain name. In the absence of any such permission from Complainant to use the DUBIZZLE Mark, it is clear that no actual or contemplated bona fide or legitimate use of the Disputed Domain Name can be claimed by Respondent.

The Disputed Domain Name is connected to a website that appears to be under construction, displaying a countdown that is currently set to zero, stating “Dubizzle Co. COMMING SOON” and “Very soon, our site will be open to visitors! email us at […].” Visitors are also encouraged to “stay tuned” by providing their email address by entering it into a text box. As stated above, there is no disclaimer on the website explaining the non-existing relationship to Complainant. Instead, the following statement is to be found “Osama © Copyright 2014.” Still Complainant’s DUBIZZLE logo is prominently displayed on the website, as well as in the website title, creating a false connection with Complainant.

Complainant alleges that Respondent is clearly not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant further alleges that the DUBIZZLE Mark is a famous mark where Complainant operates. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no disclaimer on the website explaining the non-existent relationship with Complainant. By virtue of the fact that Respondent is displaying Complainant’s DUBIZZLE Mark on the website, intentionally and specifically targeting Complainant’s customers and falsely attempting to pass itself off as Complainant, Respondent cannot claim to have been using the DUBIZZLE Mark without being aware of Complainant’s rights.

Respondent registered the Disputed Domain Name on March 19, 2014, subsequent to the registration of Complainant’s registration of the DUBIZZLE Mark in numerous jurisdictions, as well as subsequent to the launch of Complainant’s famous platform <dubizzle.com> on July 13, 2005.

Respondent also registered the domain names <etisalat.company> (relating to the company Etisalat – the Middle East’s leading telecommunications operator) and <mobinil.company> (relating to Mobinil – one of Egypt’s mobile phone operators), indicating a pattern of conduct of registering domain names incorporating third party trademarks.

Complainant asserts that the DUBIZZLE Mark, in respect of online classified services provided by Complainant, has the status of a well-known trademark with a substantial and widespread reputation throughout the communities where it operates, the 11 countries and over 21 cities where Complainant operates.

<dubizzlecom> was launched already in 2005 and Complainant has been generating revenue from offering only classified services under the name DUBIZZLE since 2006. The life to date revenues generated by Complainant are USD 67.5 million. According to Ghighi.com - Premium Website Statistics, Complainant is worth over EUR 8.6 million, with earnings over EUR 8,000 per day.

During this time, Complainant has invested USD 28 million in marketing activities, advertisement and media recognition, including brand building and social media presence. All of these activities were carried out prior to when the Dispute Domain Name was registered. Already in 2011, “Dubizzle” was one of the top three fastest rising terms searched for in Google in the UAE, next to “Facebook” and “Cricket live.”

Complainant alleges that Respondent is targeting Complainant’s brand in order to direct traffic to its own website, disrupting Complainant’s business in the process.

Prior to Complainant’s findings regarding the Disputed Domain Name, Respondent reached out to Complainant in July 2014, in an attempt to sell the Disputed Domain Name to Complainant for a “reasonable” price, but no price was agreed upon.

Instead, Complainant tried to contact Respondent on August 5, 2014 with a cease and desist letter, sent by email to Respondent’s email address as stated in the WhoIs and to the email address that Respondent used to submit his offer. Complainant advised Respondent that unauthorized use of the DUBIZZLE Mark would violate Complainant’s rights in said trademark. Complainant requested that Respondent allow the Disputed Domain Name to lapse since it was not currently being used and informed Respondent that Complainant would not hesitate to take action against Respondent if he used the Disputed Domain Name in any way that would infringe Complainant’s rights. Respondent replied on November 11, 2014 by referring to an attached document where he had stated that Complainant was right when it came to the unlawful use of the DUBIZZLE Mark, which Respondent falsely claimed that he would change as soon as possible, but not regarding anything else. Further, Respondent had stated that he would do whatever he liked with the Disputed Doman Name, taking into consideration all Complainant’s rights in the DUBIZZLE Mark. Respondent also explained that he had been informed that the Disputed Domain Name would suit Complainant better and that he had not expected to receive a reply such as this to the offer he had sent regarding Disputed Domain Name. Since Complainant was not interested in purchasing the Disputed Domain Name from Respondent and its efforts to solve this matter amicable were unsuccessful, Complainant chose to file a complaint according to the UDRP process. Complainant alleges that the attempts by Respondent to sell the Disputed Domain Name are in violation of the Policy, paragraph 4(b)(i), establishing bad faith.

B. Respondent

Respondent did not formally respond to Complainant’s contentions, but has filed an informal communication with the Center. The Panel has decided to consider this submission.

Respondent contends that he has used “Dubizzle” as part of a company name in his home country of Egypt and primarily outside of Mansoura which is the third largest city in Egypt. Respondent contends that his company, “Dubizzle Co. for Import & Export”, showed EUR 2.5 million of income in its last annual financial reports and that it has a more legitimate presence in Respondent’s home country of Egypt than Complainant which is spread out over the entire MENA region.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The trademark registrations discussed in the Factual Background serve as prima facie evidence of Complainant’s ownership and the validity of the DUBIZZLE Mark. Prior UDRP panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent asserts that it has been doing business in Egypt, especially in the environs of the city of Mansoura. Respondent does not, however, contest the validity of the registrations of the DUBIZZLE Mark, nor does Respondent state that it has objected to Complainant’s filing for registration in Egypt.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the DUBIZZLE Mark.

The Panel notes that the entirety of the DUBIZZLE Mark is in the Disputed Domain Name. As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089.

The addition of other non-distinctive terms in the Disputed Domain Name does not affect a finding that the Disputed Domain Name is identical or confusingly similar to Complainant’s registered trademark. The addition of a gTLD (whether “.com”, “.net” or, in this case, “.company”) does not typically constitute a distinguishing factor.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the DUBIZZLE Mark pursuant to the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that that the respondent lacks rights or legitimate interests, the burden of production on this factor shifts to the respondent to rebut the showing. If there is a conflict in the evidence, the burden of proof by a preponderance of the evidence, however, remains with Complainant for each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

Complainant has alleged that Complainant has not found Respondent has any registered trademark or trade name corresponding to the Disputed Domain Name, nor anything that would suggest that Respondent has been using DUBIZZLE in any other way that would provide any rights or legitimate interests in the Disputed Domain Name. Nor has Complainant granted Respondent any license to use the DUBIZZLE Mark, in any way, including its use in a domain name. In the absence of any such permission from Complainant to use the DUBIZZLE Mark, it is clear that no actual or contemplated bona fide or legitimate use of the Disputed Domain Name can be claimed by Respondent.

Complainant further alleges that the Disputed Domain Name is connected to a website that appears to be under construction, displaying a countdown that is currently set to zero, stating “Dubizzle Co. COMMING SOON” and “Very soon, our site will be open to visitors! email us at […].” Visitors are also encouraged to “stay tuned” by providing their email address by entering it into a text box. As stated above, there is no disclaimer on the website explaining the non-existing relationship to Complainant. Instead, the following statement is to be found “Osama © Copyright 2014.” Still Complainant’s DUBIZZLE logo is prominently displayed on the website, as well as in the website title, creating a false connection with Complainant.

Respondent contends that he has used “Dubizzle” as part of a company name (“Dubizzle” being the name of a family parrot) in his home country of Egypt, primarily outside of Mansoura. Respondent contends that his company showed EUR 2.5 million of income in its last annual financial reports and that it has a more legitimate presence in Respondent’s home country of Egypt than Complainant which is spread out over the entire MENA region. In addition, Respondent states that his company has been doing business for seven (7) years.

These allegations by Respondent attempt to rebut the prima facie case of Complainant for Policy paragraphs 4(c)(i)-(iii). The Panel needs to decide whether Complainant or Respondent has produced a preponderance of evidence on these elements.

Respondent has provided no printed advertising evidence showing his use of “Dubizzle”, has not suggested that any money has been spent developing this brand and has not objected to Complainant’s trademark application in Egypt. Respondent has also not submitted any evidence to support its allegation of EUR 2.5 million in annual company revenue.

What Respondent has submitted to evidence its rights or legitimate interests in the Disputed Domain Name is what appears to be an English language translation of an Egyptian Commercial Registration Certificate. While this document is difficult to interpret, it may state that Respondent has been operating a business known as “Dubizzle” in Egypt since January 1, 2015. Even if this is what the document alleges, the Panel finds that this paperwork, without additional evidence of the type described in the previous paragraph, does not establish that Respondent in reality operates such a company. Respondent’s claim of operating a company corresponding to the Disputed Domain Name is made more unlikely to the Panel when viewed against the backdrop of Respondent’s offer to sell the Disputed Domain Name to Complainant (described in the following section).

The Panel finds that the preponderance of the evidence offered in this proceeding regarding rights or legitimate interests in the DUBIZZLE Mark favors Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of a 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

(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 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

Complainant alleges that prior to Complainant’s findings regarding the Disputed Domain Name, Respondent reached out to Complainant in July 2014, in an attempt to sell the Disputed Domain Name to Complainant for a “reasonable” price, which the Panel infers was greater than the costs of registration. But no price was agreed upon.

Instead, Complainant tried to contact Respondent on August 5, 2014 with a cease and desist letter, sent by email to Respondent’s email address as stated in the Whois and to the email address that Respondent used to submit his offer. Complainant advised Respondent that unauthorized use of the DUBIZZLE Mark would violate the Complainant’s rights in said trademark. Complainant requested that Respondent allow the Disputed Domain Name to lapse since it was not currently being used and informed Respondent that Complainant would not hesitate to take action against Respondent if he used the Disputed Domain Name in any way that would infringe Complainant’s rights. Respondent replied on November 11, 2014 by referring to an attached document where he had stated that the Complainant was right when it came to unlawful use of the DUBIZZLE Mark, which the Respondent falsely claimed that it would change as soon as possible, but not regarding anything else. Further, Respondent had stated that he would do whatever he liked with the Disputed Doman Name, taking into consideration all the Complainant’s rights in the DUBIZZLE Mark. Respondent also explained that he had been informed that the Disputed Domain Name would suit the Complainant better and that it had not expected to receive a reply such as this to the offer it had sent regarding Disputed Domain Name. Since Complainant was not interested in purchasing the Disputed Domain Name from the Respondent and its efforts to solve this matter amicable were unsuccessful, Complainant chose to file a complaint according to the UDRP process. Complainant alleges that the attempts by Respondent to sell the Disputed Domain Name are in violation of the Policy, paragraph4(b)(i) and establish bad faith.

Respondent has not contested the allegations about his attempts to sell the Disputed Domain Name to Complainant.

Therefore, the Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraphs 4(b)(i) and 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <dubizzle.company> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: March 9, 2015