WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dubizzle Limited BVI v. Meraj S, Personal
Case No. D2017-1580
1. The Parties
The Complainant is Dubizzle Limited BVI, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Meraj S, Personal of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <free-dubizzle.com> ("Domain Name") is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2017. On August 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided the corresponding 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on August 18, 2017. In accordance with the Rules, paragraph 5, the due date for the Respondent to file a Response was September 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on September 8, 2017.
The Center appointed Marylee Jenkins as the sole panelist in this matter on September 15, 2017. 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
Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of several trademark registrations for the mark DUBIZZLE in multiple countries including: the word mark DUBIZZLE (United Arab Emirates Trademark Registration No. 194179 (registered on March 8, 2015) in class 35, United Arab Emirates Trademark Registration No. 194180 (registered on March 8, 2015) in class 38, and United Arab Emirates Trademark Registration No. 194181 (registered on March 8, 2015) in class 42) (individually and collectively referred to as the "Complainant's Mark"). The Complainant also owns the domain name <dubizzle.com> and markets its services at the website accessible at this domain name.
The Respondent registered the Doman Name on March 26, 2017. There is currently a web site accessible at the Domain Name.
5. Parties' Contentions
A. Complainant
The Complainant alleges that it is the leading online classifieds and community portal for the Middle East and North Africa region ("MENA"). The Complainant states that it facilitates trade by providing an online marketplace where sellers can list items for sale and buyers can search listings and connect with sellers. The Complainant alleges that it has a corporate presence in over 21 cities in 11 countries and has over 8 million visitors to its website viewing more than 290 million pages every month. The Complainant alleges that its web site at "www.dubizzle.com" is followed by a large group of people working in the United Arab Emirates, of which 40% are Western expatriates and 20% are from MENA.
The Complainant alleges that the Complainant's Mark is in possession of substantial inherent and acquired distinctiveness, that the Complainant's Mark and brand are well-recognized by consumers, industry peers, and the broader community where the Complainant operates, namely in countries and cities across the MENA region. The Complainant alleges that it is the owner of the Complainant's Mark registered in the United Arab Emirates, among other countries. When comparing the Domain Name to the Complainant's Mark, the Complainant alleges that the relevant comparison is to be made between only the second-level portion of the Domain Name and the Complainant's Mark. The Complainant alleges that the Domain Name can be considered as capturing, in its entirety, the Complainant's Mark by simply adding the generic term "free" to the beginning of the Complainant's Mark. The Complainant alleges that the mere addition of this generic term "free" to the Complainant's Mark does not negate the confusing similarity between the Domain Name and the Complainant's Marks under paragraph 4(a)(i) of the Policy. The Complainant then alleges that the Domain Name must be considered confusingly similar to the Complainant's Mark. The Complainant also alleges that the Respondent's addition of a hyphen does nothing to distinguish the Domain Name from the Complainant's Mark, does not diminish the confusing similarity between the Domain Name and the Complainant's Mark and should therefore be disregarded for purposes of making this determination.
The Complainant further alleges that the Respondent's use of the Domain Name to operate an online classifieds site that enables users to buy and sell goods, including vehicles, real estate, tickets, and electronics; solicit and offer services, such as babysitting, maintenance, and repairs; and search for jobs across industries in numerous locations in the United Arab Emirates, suggests that the Respondent intended the Domain Name to be confusingly similar to the Complainant's Mark as a means of furthering consumer confusion. As a result, the Complainant alleges that the Respondent's use of the Domain Name to resolve to an online classifieds site is further evidence that the Domain Name is confusingly similar to the Complainant's Mark.
The Complainant alleges that the Respondent is not sponsored by or affiliated with the Complainant in any way; no license or authorization of any kind has been given by the Complainant to the Respondent to use the Complainant's Mark; and the Respondent has never had a business relationship with the Complainant.
The Complainant further alleges that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests in the Domain Name.
The Complainant further alleges that the Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the Domain Name. On the website available at the Domain Name, the Complainant states that the Respondent offers a product which directly competes with the Complainant's own offerings, namely, an online classifieds website offering various products and services, including job openings. The Complainant also alleges that the Respondent registered the Domain Name significantly after the Complainant's first use in commerce of the Complainant's Mark as well as filing for registration of the Complainant's Mark across numerous countries, including the United Arab Emirates.
The Complainant alleges that the Respondent's use of the Domain Name constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use under paragraph 4(b)(iii) because the Respondent's Domain Name is confusingly similar to the Complainant's Mark and the website at the Domain Name features similar, if not identical, online classified advertisement services as compared to the Complainant's offerings. The Complainant further alleges that the Respondent has ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding and it is more likely than not that the Respondent knew of and targeted the Complainant's Mark. The Complainant alleges that the Respondent should be found to have registered and used the Domain Name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Mark.
A review of the second-level domain 'free-dubizzle' of the Domain Name shows that it comprises the Complainant's Mark (i.e., the registered mark DUBIZZLE) along with a hyphen and the descriptive word 'free.' The addition of the hyphen and the descriptive word 'free' does not prevent the Domain Name from being considered confusingly similar to the Complainant's Mark. The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's Mark and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. The uncontested evidence shows that the Complainant had well established rights to the Complainant's Mark at the time of the Respondent's registration of the Domain Name and that the Respondent nevertheless registered and has been using the Domain Name for several months. The fact that the Domain Name resolves to a web site offering similar services and information (i.e., online classified advertisement services) as that found on the Complainant's own web site at "www.dubizzle.com" does not support a finding that the Respondent was making any type of legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers. Rather based on the submitted evidence, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Based upon the uncontested evidence submitted by the Complainant, the Panel finds that the Respondent clearly had knowledge of the Complainant's Mark when registering the Domain Name. This finding is supported by the evidence showing that the Domain Name was registered well after the Complainant began its use of the Complainant's Mark. Further, the evidence shows that the Respondent created a web site at the Domain Name offering similar services and information (i.e., online classified advertisement services) as that found on the Complainant's site in order to draw users to the Respondent's site for commercial gain. This evidence establishes that the Respondent was well aware of the Complainant's business, its services, its website and the Complainant's Mark. Based on this cumulative evidence, the Panel finds that the Respondent registered and is using the Domain Name to intentionally attempt 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 site or of the services offered thereon. The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <free-dubizzle.com> be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Date: October 6, 2017
