WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Saltside Technologies AB v. Jobair Islam, Enter Group

Case No. D2015-0809

1. The Parties

The Complainant is Saltside Technologies AB of Göteborg, Sweden, represented by Advokatfirman Lindahl, Sweden.

The Respondent is Jobair Islam, Enter Group of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <বিক্রয়.com> (<xn--p5b9bkd5do3h.com>) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2015. On May 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2015, the Registrar 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 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 the Respondent of the Complaint, and the proceeding commenced on May 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2015. On June 5, 2015, the Center informed the parties that it would proceed to Panel Appointment.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 12, 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.

4. Factual Background

The Complainant runs an online classified portal from the domain name <bikroy.com> and uses the trademark BIKROY in connection with its services. It has filed trademark applications for the said mark in Bangladesh on April 18, 2012. The application numbers for the trademark filings are 153255 and 153256 under classes 9 and 35. The Complainant relies on its common law trademark rights, as the trademark applications are still pending.

The Complainant registered the domain name <bikroy.com> on September 25, 2011. The Respondent registered the disputed domain name <বিক্রয়.com> (<xn--p5b9bkd5do3h.com>, “bikroy.com” in Bangla alphabet) on May 15, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant states “www.bikroy.com” is the largest online classified website in Bangladesh, where users buy and sell everything from used cars to mobile phones, or search for properties and jobs. The Complainant states it has used “Bikroy” as a domain name and as a trade name since June 2012. The Complainant states its trademark BIKROY is used extensively and about 400,000 advertisements were posted on the “www.bikroy.com” website at the time of filing the present Complaint. The Complainant states an advertisement that is posted on the “www.bikroy.com” website is valid for 90 day unless manually deleted.

The Complainant has provided evidence of traffic to its website from March 2012 till the date of filing the Complaint. The number of visits to “www.bikroy.com” was 111,842,164 by 56,920,097 users who performed a total of 1,123,018,027 page views. The Complainant states its trademark BIKROY is displayed on each page, therefore the trademark has more than one billion page views over the last three years and consumers associate the mark with the Complainant.

The Complainant states the use of its trademark has generated advertising revenue of about 12,416,183 Bangladeshi Taka (equivalent to EUR 148,166) from January 2014 to March 31, 2015. As evidence of its popularity in Bangladesh, the Complainant has submitted its Alexa ranking, showing its website is ranked as the 19th largest site in Bangladesh and on Similar Web, it is ranked as the 17th largest site in Bangladesh, and this shows strong familiarity of its mark among the public asserts the Complainant.

The Complainant has provided evidence of media recognition of its mark BIKROY in Bangladesh and states two hundred and forty eight articles have been published from January 1, 2014 to February 28, 2015 and during the same period, television and radio coverage were fifty-eight exposures. The Complainant states it has invested heavily in marketing the trademark BIKROY and has provided evidence of its year-wise promotional and advertisement expenses: in 2012 EUR 894,000, in 2013 EUR 1,787,000, in 2014 EUR 2,200,000. In 2015 the Complainant states it has spent EUR 735,000 on advertisements and states the projected figures for 2015 and 2016 are USD 5.5 million and USD 7.5 million respectively approximately EUR 4,915,000 and EUR 6,704,000. The Complainant states it has participated in fairs to promote its mark, these include, Google Business Group Dhaka in 2014, Digital World organized by BASIS in 2015 and Women Techmakers, organized by Google Developers Group. Consumer surveys conducted by the Complainant showed a growing recognition of its mark and in 2015 a high level of recognition among the consuming public.

The Complainant requests for transfer of the disputed domain name on the grounds that the disputed domain name is confusingly similar to the trademark, the Respondent has no rights and legitimate interests in the disputed domain name and the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not file any formal response in the proceeding, but the Respondent (or someone connected to the Respondent) sent an email communication to the Center. The email communication dated May 15, 2015 to the Center is extracted here verbatim:

“I already sell this domain $10000 USD to a bangladeshi people. he have trade license of this domain & her business. Her trade license is 5 years old. and they have all documents when open this dispute you don’t telling or aks me. This case close by one people opinion!!! this is not fare. my clients have documents. you know first buyer are domain name owner and when he dont renew the domain. others people buy this domain. If this domain need buy from our client.”

6. Discussion and Findings

To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish three requirements set out under paragraph 4(a) of the Policy. These are:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first requirement under paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has relied on its common law unregistered trademark rights in the BIKROY mark. To successfully assert common law or unregistered trademark rights, it is required that a complainant must show the mark has become a distinct identifier associated with the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7.

The Complainant has provided ample evidence to establish its common law or unregistered trademark rights in the BIKROY mark, these inter alia include: the statistics of web traffic, usage data for its website, including number of users and pages viewed, advertisements posted, amount of revenues generated by the website under the BIKROY trademark; advertising and marketing efforts and expenses by the Complainant to promote its mark from the year 2012; consumer surveys conducted by the Complainant showing popularity of its mark and extensive media coverage of its mark in the Bangladesh media. The Panel finds, based on evidence filed by the Complainant in the proceeding, that it has established the BIKROY trademark has become a distinct identifier of source of the services offered by the Complainant and that the Complainant has common law or unregistered trademark rights for purpose of the Policy.

The Complainant has raised the following points regarding similarity of the disputed domain name to its trademark. The disputed domain name is the same word as the Complainant’s mark and the semantic meaning is identical. Ninety eight percent of the population in Bangladesh speaks Bengali. Prior to the Complainant’s registration of the domain name <bikroy.com>, the Internet traffic for the word “Bikroy” was negligible in both English and Bangla. Since the launch of the Complainant’s website, the search traffic for the word in both languages has increased, indicating that consumers find “Bikroy” is similar in both languages. The Complainant further submits the website is available in both languages, and this increases the risk of confusing similarity.

Based on submissions and the evidence adduced by the Complainant, the Panel finds the disputed domain name <bikroy.com> is confusingly similar to the Complainant’s trademark. The disputed domain name is the ACE encoded version, or the Internationalized Domain Name (IDN) equivalent of the Complainant’s trademark and its domain name in Bangla alphabet. The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy that the disputed domain name is confusingly similar to a trademark in which it has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie showing that the Respondent lack rights, the Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate any rights in or legitimate interests in the disputed domain name.

The Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name or in the trademark BIKROY written either in Bangla or Latin alphabet. The Complainant states it is not affiliated with the Respondent and has not authorized the Respondent to register or use the disputed domain name. The Complainant has further argued that the disputed domain name does not reflect the legal name of the Respondent or any variant thereof. The Respondent has not used the disputed domain name or a corresponding trademark in connection with a commercial bona fide offering of products or for fair use.

The Complainant has conclusively established in the proceeding that it is a prior adopter and user of the BIKROY trademark. There is no material before this Panel to suggest that the Respondent uses the disputed domain name in a bona fide manner. The Respondent has not refuted or denied any of the statements made by the Complainant. Based on the unchallenged assertions of the Complainant, the Panel finds the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and has accordingly satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith.

The Complainant has submitted that in December 2014 a person called “Jobair” sent a proposal to sell the disputed domain name to the Complainant by email. The Complainant states it put forward a counter proposal to pay a small amount for the transfer of the disputed domain name, as it is the owner of the trademark. In reply to the Complainant’s offer, an amount of USD 45,000 was demanded for the disputed domain name. The Complainant states the Respondent ought to have been aware of the Complainant’s rights in the mark based on the offer made for selling the disputed domain name. The Complainant further states that the Respondent’s name is Islam Jobair, and the proposal to sell the disputed domain name was sent from the email account of Michel Jobair. The Complainant argues that under the circumstances, it is reasonable to assume that the Respondent and the sender of the email are one and the same person or two different people working closely together.

The Panel finds the material on record indicates the Respondent has registered the disputed domain name primarily to sell it. The Respondent (or someone connected to the Respondent) has admitted in his email to the Center dated May 15, 2015 that he has sold the disputed domain name to an undisclosed party for a sum of USD 10,000.¹ Further, the email sent by “Jobair” to the Complainant clearly indicates an intention to sell the disputed domain name for a very large amount. It is therefore reasonable to infer under the circumstances, that the intention of the Respondent in registering the disputed domain name was to obtain commercial gain on the basis of the Complainant’s mark, and such circumstances are indicative of bad faith registration and bad faith use under the Policy.

The Panel finds the Complainant has established that its trademark and its domain name are extensively used and the mark BIKROY has considerable recognition in Bangladesh, where a majority of the consuming public resides. The Complainant has put forward convincing evidence of the popularity of its website such as the Complainant’s website ranking on Alexa.com, the number of users, pages viewed and advertisements posted on its site, its own promotion and advertisements for the mark and its recognition in the Bangladesh media.

The Panel finds the Complainant has put forward convincing arguments that have been supported by substantial documentary evidence. Based on the evidence on record, it is reasonable to assume that the Respondent’s intention for registering the disputed domain name is primarily for trying to sell it either to the owner of the trademark or any other party, which is a classic case of cyber-squatting within the meaning of paragraph 4(b)(i) of the Policy.

The disputed domain name is the ACE encoded equivalent of the Complainant’s trademark in Bangla alphabet. In specific circumstances, registration of a domain name that is the ACE encoded equivalent of the trademark of a complainant may be considered registration and use in bad faith under the Policy. See Jesus Encinar v. Registrant [1116922], Moniker Privacy Services / Michael Doson, WIPO Case No. D2008-0568, where the ACE encoded equivalent domain name of a trademark was found to be registered and used in bad faith.

On the basis of the submissions made by the parties and the given facts and circumstances discussed, the Panel finds the Respondent has registered the disputed domain name in bad faith and has been using the disputed domain name in bad faith. The Complainant has successfully established the third element under paragraph 4(a) of the Policy.

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 <বিক্রয়.com> (<xn--p5b9bkd5do3h.com>) be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: June 25, 2015

¹ The Panel notes in this request that the Registrar has confirmed that the Respo9ndent is the registrant of the disputed domain name and that the disputed domain name would remain locked during the proceeding.