VisaHQ.com Inc. v. Zia ul Haq Abdul Azeez
Claim Number: FA1708001743115
Complainant is VisaHQ.com Inc. (“Complainant”), represented by Anna B. Naydonov of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Zia ul Haq Abdul Azeez (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dubaivisahq.com>, registered with Domain.com, 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.
Hector Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2017; the Forum received payment on August 4, 2017.
On August 7, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <dubaivisahq.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 August 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2017 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@dubaivisahq.com. Also on August 15, 2017, 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.
A timely Response was received and determined to be complete on September 5, 2017. Even though it was not a formal submission but an email, the informal correspondence was treated as a formal response.
On September 11, 2017 an Additional Submission by Complainant was received.
On September 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hector Ariel Manoff as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1) Complainant provides visa and passport services for travelers and countries all over the world, and has offices in twelve different countries, with services available to over two billion people.
2) Complainant registered the VISAHQ mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,165,127, registered October 31, 2006). See Compl., at Attached Ex. 10.
3) Complainant registered the stylized VISAHQ mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,384,865, registered February 19, 2008). See Compl., at Attached Ex. 10.
4) Complainant has registration for VISAHQ in other countries. See Compl., at Attached Ex. 10.
5) Complainant has registered the domain name <visahq.com> in 2002 and has been used it since then. See Compl., at Attached Ex. 4.
6) Complaint has registered other domain names focused on particular geographic regions around the world, incorporating that region’s name along with its VISAHQ mark, including the United Arab Emirates. See, e.g., Ex. 4.
7) Respondent registered the domain name <dubaivisahq.com> on February 9, 2016. See Compl., at Attached Ex. 2.
8) Respondent’s <dubaivisahq.com> domain name is virtually identical to Complainant’s mark as it contains the entire VISAHQ mark and simply adds the geographic term “Dubai” and the non-distinguishing generic top-level domain (“gTLD”) “.com.”.
9) Respondent has no rights or legitimate interests in the <dubaivisahq.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
10) Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to offer goods and services in direct competition to those of Complainant. See Compl., at Attached Ex. 11. Respondent only uses the VISAHQ mark to capitalize on the goodwill associated with the well-known, distinct mark.
11) Respondent registered and uses the <dubaivisahq.com> domain name in bad faith. Respondent intentionally selected, registered, and uses the disputed domain name to attract Internet users to its website for commercial gain by engendering confusion and mistake with Complainant and its VISAHQ mark and name as to the source, sponsorship, affiliation, connection, and/or endorsement of Respondent’s services.
12) In response to Complainant’s cease and desist letter, Respondent offered to sell the domain name rather than transfer it. See Compl., at Attached Ex. 13.
13) Respondent must have had actual knowledge of Complainant’s rights in the VISAHQ mark given Complainant’s federal registrations, its world-wide presence, its long-standing use of the mark, the fact that the disputed domain name comprises of Complainant’s mark in its entirety, and because Respondent registered the disputed domain name shortly after Complainant’s successful expansion into Dubai.
B. Respondent
1) The disputed domain name comprises of generic terms to which Complainant does not own exclusive rights.
2) Respondent’s site is an internet business for cheap flights, hotels and Dubai, UAE visit visas.
3) Respondent argues not to know about the existence of VisaHQ.com when buying the disputed domain name.
4) Respondent does not disrupt Complainant’s business because it offers different goods and services related to travel and tourism in Dubai.
5) Respondent argued to maybe consider to sell the domain name.
C. Additional Submissions
1) Complainant filed an Additional Submission objecting Respondent’s response with respect to the filing date.
2) Respondent does not dispute that the Domain Name is confusingly similar to
Complainant’s mark.
3) Complainant does not claim rights to the English alphabet, only to the VISAHQ registered trademarks.
4) Respondent appears to claim that he has rights or a legitimate interest in the Domain Name because he “legally bought [it] from a genuine registrar…”, but the issue is that but whether he had any rights or legitimate interest in registering a domain name that is confusingly similar to Complainant’s trademarks, and using it for a competing business.
Complainant, VisaHQ.com Inc. provides visa and passport services for travelers and countries all over the world, registered the domain name <visahq.com> in 2002 and has used it for several years. Complaint has registrations for VISAHQ mark in the United States since 2006 and in other countries. Complainant has registered other domain names focused on particular geographic regions, incorporating that region’s name along with its VISAHQ mark, including the United Arab Emirates. Respondent registered the domain name<dubaivisahq.com> on February 9, 2016 and used it to offer goods and services in direct competition to those of Complainant.
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.
Complainant has registrations for VISAHQ mark and stylized VISAHQ mark in the United States since 2006. See Compl., at Attached Ex. 10, along with registrations in other countries, including United Arab Emirates (Registration No. 203831, filed on January 5, 2014 and granted on January 27, 2016). See Ex. 10.
This Panel finds that registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Complainant has established rights in the VISAHQ mark.
Complainant next argues that Respondent’s <dubaivisahq.com> domain name is virtually identical to Complainant’s mark as it contains the entire VISAHQ mark and simply adds the geographic term “Dubai” and the non-distinguishing gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). See also, VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ, FA1607001683085, (Forum August 17, 2016). Adding a geographical descriptor does not adequately distinguish a domain name from a mark in the same channel of commerce under a Policy ¶ 4(a)(i) analysis.
The Panel finds that the <dubaivisahq.com> domain name is confusingly similar to the VISAHQ mark under Policy ¶4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <dubaivisahq.com> domain name and that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
According to WHOIS information, Respondent is not commonly known as <dubaivisahq.com>. The WHOIS identifies “Zia ul Haq Abdul Azeez / Zia ul Haq Abdul Azeez” as the registrant. See Compl., at Attached Ex. 2. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent has not submitted evidence to reject this ground.
The Panel finds that Respondent is not commonly known by the <dubaivisahq.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to offer goods or services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). See also VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ, Claim Number: FA1607001683085, August 17, 2016. (The domain name resolves to an active website prominently displaying the VISAHQ mark (with a space inserted), and offering services almost identical to those offered by Complainant. Such a competitive use by a respondent 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).).
Respondent argues it offers different goods and services related to travel and tourism in Dubai; however, Respondent itself states that offers “UAE visit visas”.
In addition, Complainant provides a screenshot of the resolving webpage, which shows that Respondent appears to offer similar services with the domain name. See Compl., at Attached Ex. 11.
The Panel finds that Respondent competes with Complainant, and that Respondent fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that Respondent disrupts Complainant’s business by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. This Panel finds that disrupting a complainants business using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iii) & (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.
As noted previously, Complainant provides a screenshot of the alleged competing use, and it shows that Respondent uses the domain name to offer travel services which includes “processing short and long term visas to the UAE”. See Compl., at Attached Ex. 11.
Complainant’s website mentions that VisaHQ provides “expediting services for travel visas”.
This Panel finds that the services are basically the same.
This Panel also notes that there are some similarities in the use of the type of letters (capital and small letters) and the design on the letter “Q” in both cases.
The Panel concludes that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iii) & (iv).
This Panel finds that Respondent had actual knowledge of Complainant’s VISAHQ mark when registering the disputed domain name based on the amount of registration in different countries, its long-standing use of the mark, the fact that the disputed domain name comprises of Complainant’s mark in its entirety, and that Respondent registered the disputed domain name shortly after Complainant’s successful expansion into Dubai. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
This Panel also finds that Respondent’s use of some elements on its website is similar to Complainant’s website. See, VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ, FA1607001683085, Forum August 17, 2016. (Respondent’s use of elements on its website are strikingly similar to Complainant’s website. This indicates to the Panel’s satisfaction Respondent knew of Complainant's mark when the domain was registered…and Respondent intended to capitalize on that fact).
The Panel finds bad faith under Policy ¶ 4(a)(iii).
In addition, Complainant claims that when it sent a cease and desist letter to Respondent, Respondent made a general offer to sell the <dubaivisahq.com> domain name. See Compl., at Attached Ex. 13. Offering a confusingly similar domain name for sale can evince bad faith registration. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
The Panel finds that Respondent’s offering of the domain name for sale directly to Complainant as evidence of bad faith registration under Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dubaivisahq.com> domain name be TRANSFERRED from Respondent to Complainant.
Hector Ariel Manoff, Panelist
Dated: September 14, 2017
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