WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dubizzle Limited BVI v. Simon Lundgren / Domain Park Ltd
Case No. DAE2015-0002
1. The Parties
The Complainant is Dubizzle Limited BVI of Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Simon Lundgren / Domain Park Ltd of Berlin, Germany.
2. The Domain Name and Registrar
The disputed domain name <dubizzle.ae> is registered with AE Domain Administration (.aeDA).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2015. On February 20, 2015, the Center transmitted by email .aeDA a request for registrar verification in connection with the disputed domain name. On February 22, 2015, .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 February 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 18, 2015.
The Center appointed Edoardo Fano as panelists in this matter on March 25, 2015. The Panel finds that it was properly constituted. Each member of 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. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant, founded in 2005, operates a leading online classified site, “www.dubizzle.com”, in the Middle East and North Africa (“MENA”), allowing users to buy and sell many different kinds of goods and services.
The Complainant owns several trademark registrations for DUBIZZLE in many countries of the MENA region, including Algeria, Tunisia, Lebanon, the United Arab Emirates (“UAE”) and Saudi Arabia.
The disputed domain name <dubizzle.ae> was registered on July 4, 2011, before the Complainant’s trademark DUBIZZLE was registered but after the Complainant’s website “www.dubizzle.com” was launched. At the time of filing of the Complaint, the disputed domain name resolved to a commercial parking website with sponsored links.
On January 19, 2015, the Complainant sent a cease and desist letter by email to the Respondent and received no reply from the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain name <dubizzle.ae> is confusingly similar to its trademark DUBIZZLE.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to register the disputed domain name or to use its trademark within the concerned website, nor it is commonly known by the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose of attracting Internet users for commercial gain by creating confusion with the Complainant’s trademark.
The Complainant asserts common law rights in DUBIZZLE predating the registration of the disputed domain name. For this contention it submits evidence that, inter alia, in the year the disputed domain name was registered, DUBIZZLE was in the top three fastest rising words used in Google search.
B. Respondent
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc,
WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,
WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,
WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,
WIPO Case No. D2007-0288)1.
6. Discussion and Findings
Paragraph 6(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark DUBIZZLE both by registration and acquired reputation, and that the disputed domain name <dubizzle.ae> is confusingly similar to the trademark DUBIZZLE.
It is well accepted that a country code Top-Level Domain (“ccTLD”) suffix, in this case “.ae”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g.OSRAM GmbH v. Tom Zhu,WIPO Case No. DAE2014-0002).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 6(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services, and affirms that it has not granted the Respondent any license or authorization to use its DUBIZZLE mark
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name and hence has not rebutted the Complainant’s prima facie case.
C. Registered or is Being Used in Bad Faith
Paragraph 6(b) of the Policy provides that for the purposes of Section 6 (a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark DUBIZZLE in the MENA region was clearly established at the time the Respondent registered he disputed domain name and the Panel finds that the Respondent knew that the disputed domain name <dubizzle.ae> was confusingly similar to the Complainant’s trademark2. This is also confirmed by the fact that the website at the disputed domain name refers to different products and services mainly located in the Dubai area.
Regarding the use of the disputed domain name in bad faith, the website at the disputed domain name is a page with several links, possibly automatically generated, mainly referring to the Dubai area.
The Panel considers that the use of the website associated with the disputed domain name must be considered in bad faith, as some of the links on the website at the disputed domain name, even in the case they are automatically generated, refer to some of the business areas of the Complainant and are therefore likely to create confusion, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.4.
All of the above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 6(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 6(a)(iii) of the Policy has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dubizzle.ae> be transferred to the Complainant.
Edoardo Fano
Panelist
Date: April 8, 2015
1 While the Decision is being rendered under the Policy and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the textual similarities between the two, the Panel considers UDRP precedent relevant to this proceeding and will refer to it throughout.
2 While, as noted in the Factual Background, the disputed domain name predates the Complainant’s registration of its DUBIZZLE trademark, the Panel accepts, on the basis of the Complainant’s evidence, that the Complainant had common law rights in this mark at the time of the registration of the disputed domain name for the purposes of the Policy. In any event, it is sufficient under the Policy for the Complainant to establish only that the Respondent is using the disputed domain name in bad faith, which it has for the reasons stated above.
