Emaar Properties PJSC v. Nobalaa co
Claim Number: FA1211001472100
Complainant is Emaar Properties PJSC (“Complainant”), represented by Pallavi Mehta Wahi of K&L Gates LLP, Washington, USA. Respondent is Nobalaa co (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emaar-iraq.com>, registered with WILD WEST DOMAINS, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2012; the National Arbitration Forum received payment on November 19, 2012.
On November 20, 2012, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <emaar-iraq.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the name. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emaar-iraq.com. Also on November 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Emaar Properties PJSC, is a Dubai-based Public Joint Stock Company that creates master-planned communities across the globe, operates hotels and commercial buildings in numerous countries, and offers a wide range of related services in support of its worldwide construction and real estate business. Complainant uses the domain name <emaar.com> to offer information on EMAAR’s services.
Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EMAAR mark (e.g., Reg. No. 3,797,685, registered June 1, 2010). Complainant also owns and shows evidence of trademark registrations with the United Arab Emirates Industrial Property Department (“UAEIPD”) for the EMAAR mark (e.g., Reg. No. 38,618, filed on May 29, 2002). Complainant has also registered the EMAAR mark in numerous countries throughout the world.
Respondent’s <emaar-iraq.com> domain name is confusingly similar to Complainant’s EMAAR mark as it wholly incorporates Complainant’s EMAAR mark and adds the geographic term “Iraq.”
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the disputed domain name, where the WHOIS information identifies “Nobalaa co” as the registrant.
Respondent is using the disputed domain name to impersonate Complainant and to misdirect Internet traffic from Complainant’s website to Respondent’s website, which are not legitimate uses of the disputed domain name. Further, the disputed domain name is not used in connection with a bona fide offering of goods and services.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is attempting to profit from Complainant’s goodwill and intentionally set out to attempt to impersonate Complainant for fraudulent gain.
Respondent registered the disputed domain name with knowledge of Complainant’s rights in the trademark incorporated into that domain. Respondent’s use of the EMAAR mark and identical logo suggests that Respondent was aware of Complainant and the EMAAR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO and UAEIPD for the EMAAR mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent registered the at-issue domain name after Complainant acquired rights in the EMAAR trademark.
Respondent is using the at-issue domain name to address a website which displays the EMAAR mark and logo and links to Complainant’s competition.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the EMAAR mark pursuant to Policy ¶ 4(a)(i) via its trademark registrations with the USPTO and with the UAEIPD. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), (finding that the complainant’s numerous registrations for its trademark sufficed to establish the complainant’s rights in the mark).
Respondent’s <emaar-iraq.com> domain name is confusingly similar to Complainant’s EMAAR mark. In forming the domain name Respondent incorporates Complainant’s entire EMAAR mark, adds a hyphen followed by the geographic term “Iraq,” and appends the top level domain name, “.com,” thereto. Respondent’s addition of the term “Iraq” to Complainant’s EMAAR mark augments the confusion between the <emaar-iraq.com> domain name and Complainant’s EMAAR mark under Policy ¶4(a)(i). See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The addition of the hyphen and top level domain name do nothing to distinguish the domain name from Complainant’s mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Nobalaa co” as the registrant of the at-issue domain name. Furthermore, there is no evidence before the Panel which suggests that Respondent is known by the at-issue domain name notwithstanding the contrary indication in the WHOIS record. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name to impersonate Complainant and to misdirect Internet traffic from Complainant’s website to Respondent’s website. Respondent’s <emaar-iraq.com> website offers real estate development services that compete with Complainant’s services. Respondent’s use of the confusingly similar domain name to compete with Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(I), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent displays an identical logo to Complainant’s as well as Complainant’s color scheme on Respondent’s <emaar-iraq.com> website. Indeed, Respondent has used the at-issue domain name ostensibly on behalf of a “Managing Director” of EMAAR named “Osama Abulenien.” Respondent’s use of Complainant’s logo and trade dress is designed to cause consumer confusion and is part of Respondent’s foul scheme to impersonate Complainant. Respondent’s desire to pass itself off as Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Given the forgoing, Complainant satisfies its initial burden and, since there is no evidence to the contrary, conclusively demonstrates that Respondent lacks both rights and legitimate interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
In registering and using the at-issue domain name Respondent set out to take advantage of Complainant’s goodwill by impersonating Complainant for commercial gain. Showing Complainant’s exact mark and logo (with the addition of the word “Iraq” underneath) on Respondent’s <emaar-iraq.com> website indicates Respondent’s clear intent to impersonate Complainant. Thus, Respondent selected, registered, and is using the <emaar-iraq.com> domain name to its benefit and is wrongfully capitalizing on the goodwill associated with Complainant’s EMAAR mark. These circumstances demonstrate Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business…to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Additionally, Respondent’s use of the at-issue domain name to perpetuate a fraud by passing itself off as Complainant further suggests Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii)). See Bank for Int’l Settlements v. BFIS, D2003-0984 (WIPO Mar. 1, 2004) (finding Respondent’s use of the disputed domain name to mislead Internet users into believing that Respondent is Complainant, for the purpose of attempting to perpetrate a scam is use in bad faith); see also Action Educational Services d/b/a West Coast University v. West Coast University International, Inc, FA 191541 (Nat. Arb. Forum July 2, 2008) (finding that Respondent’s attempt to pass itself off as Complainant also evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii)).
Finally, Respondent was undoubtedly aware of Complainant’s EMAAR mark when it registered the <emaar-iraq.com> domain name. Given Respondent’s unauthorized use of Complainant’s trademark and logo on the <emaar-iraq.com> website it is inconceivable that Respondent did not have knowledge of the EMAAR mark prior to registering the at-issue domain name. Moreover, Respondent’s use of the domain name to address a website designed to allow Respondent to pass itself off as Complainant, further suggests that Respondent had knowledge of Complainant and its EMAAR trademark before it registered the at-issue domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Registering a domain name with prior knowledge of another’s rights therein indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant’s magazine covers an industry towards which Respondent’s services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emaar-iraq.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 30, 2012
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