WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chalhoub Group Limited v. WhoisGuard Protected / Haron Ali, Swaqny

Case No. D2020-1653

1. The Parties

The Complainant is Chalhoub Group Limited, United Kingdom, represented by Cabinet Flechner, France.

The Respondent is WhoisGuard Protected, Panama / Haron Ali, Swaqny, Egypt.

2. The Domain Name and Registrar

The disputed domain name <ghawalicoupon.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2020. On June 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 26, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 30, 2020

The Center verified that the Complaint together with the amendment to 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 July 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 4, 2020. 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 in the field of retail goods and services, including, inter alia, cleaning products and cosmetics. The Complainant owns the trademark registrations Nos. 227532, 227533, 227534, and 227535 registered on June 17, 2015 in the United Arab Emirates (“UAE”) for the trademark GHAWALI. The Complainant owns the trademark registrations nos. 1436009746, 1436009747, 1436009748 and 1436009749 for the trademark GHAWALI in Saudi Arabia (“KSA”).

The disputed domain name was registered on May 16, 2019. The disputed domain name resolves to a website which claims to offer coupons for purchasing products branded GHAWALI in the UAE and KSA.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark GHAWALI. The Complainant owns the trademark GHAWALI in UAE and KSA. The disputed domain name is only different from the Complainant’s trademark in that it includes the descriptive word “coupon”.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent infringes the trademark rights of the Complainant by using a sign similar to the Complainant’s trademark in connection with identical or similar goods and services directed to the public. This constitutes an illegitimate commercial use.

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’s trademark and its reputation as the disputed domain name resolves to a website, which refers to the website of the Complainant and acknowledges its reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark GHAWALI. The Panel is satisfied that the Complainant has established its ownership of the trademark GHAWALI.

The disputed domain name comprises the Complainant’s trademark GHAWALI in its entirety while simply adding the dictionary term “coupon”. The dictionary term does not eliminate confusing similarity. The generic Top-Level domain (“gTLD”) “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant did not expressly state that it has never authorized the Respondent to use its trademark as part of the disputed domain name. However, it is clear that no such authorization was granted given that the Complainant states that the Respondent is infringing the trademark rights of the Complainant and the use made by the Respondent is an illegitimate commercial use.

The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which has not been rebutted by the Respondent. The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In particular, the Panel notes that the disputed domain name resolves to a website which seems to offer coupons on the Complainant’s GHAWALI branded products thus creating the misleading impression that it is affiliated with the Complainant. The Panel does not find this to be a bona fide offering of goods or services within the meaning of the Policy. The Panel is also of the view that the requirements of the Oki Data test have not been met in the case at hand.

Accordingly, the requirements under paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

The Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name. The disputed domain name resolves to a website that promotes the website of the Complainant and pretends to offer coupons on products of the Complainant bearing the trademark GHAWALI.

Hence, it must be that the Respondent was fully aware of the Complainant and its trademarks and has registered and used the disputed domain name comprising the Complainant’s marks with the aim of attracting consumers to its website with the intent of commercial gain, by creating the impression of being affiliated with the Complainant.

Furthermore, when clicking on the link to continue with the purchase, Internet users are directed to a blank page, which supports the Complainant’s contention that disputed domain name is being used for illegitimate purposes in bad faith. Additionally, the use of a privacy protection service is an indication of bad faith in the circumstances of this case.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <ghawalicoupon.com> be cancelled.

Nayiri Boghossian
Sole Panelist
Date: August 7, 2020