SHUAA Capital psc v. Shuua AE
Claim Number: FA1410001587223
Complainant is SHUAA Capital psc (“Complainant”), represented by David Bateman of K&L Gates LLP, Washington, USA. Respondent is Shuua AE (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shuaaae.com>, registered with Onlinenic Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his 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 October 28, 2014; the National Arbitration Forum received payment on October 28, 2014.
On October 30, 2014, Onlinenic Inc. confirmed by e-mail to the National Arbitration Forum that the <shuaaae.com> domain name is registered with Onlinenic Inc. and that Respondent is the current registrant of the name. Onlinenic Inc. has verified that Respondent is bound by the Onlinenic Inc 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 October 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2014 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@shuaaae.com. Also on October 30, 2014, 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 1, 2014, 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 is a Dubai-based public stock company that offers financial services to corporate and institutional clients, as well as family businesses and high-net-worth-individuals.
Complainant owns the SHUAA trademark through its numerous trademark registrations around the world. Complainant owns the SHUAA mark through its trademark registrations with the United Arab Emirates Ministry of Economy and Commerce (“UAEMEC”) (e.g., Reg. No. 33,378, registered Sept. 23, 2002).
The <shuaaae.com> domain name is confusingly similar to Complainant’s SHUAA mark because Respondent has simply added the letters “ae” to the mark. The additional “ae” indicates Complainant’s home country, the United Arab Emirates, and adds to the similarity between the mark and the disputed domain name.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <shuaaae.com> domain name. Respondent is neither licensed nor authorized to use the SHUAA mark. Searches for this misspelled version of SHUAA found no associated entities and searches on the listed address indicate that it does not exist. So, even though Respondent appears to be known by the disputed domain name, it is not. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
Respondent uses the disputed domain name to pass itself off as Complainant and send emails to third-parties so as to solicit funds.
Respondent registered the disputed domain name with knowledge of Complainant’s rights in the SHUAA mark. By impersonating Complainant, it is clear that Respondent was aware of Complainant and its rights in the SHUAA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SHUAA mark through its United Arab Emirates trademark registrations of such mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to pass itself of as Complainant so that it might defraud Internet users.
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 rights in the SHUAA mark through its various trademark registrations around the world, including in the United Arab Emirates. Such registrations are sufficient to establish rights in the SHUAA mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
In forming the at-issue domain name Respondent adds the letters “ae” to the Complainant’s trademark and then appends the top-level domain name “.com” to the resulting string. The added letters, “ae” are a geographic indicator of the United Arab Emirates, Complainant’s principal country of operation. Rather than serve to differentiate the domain name from Complainant’s mark, the addition of these letters further confound the two. Additionally, the addition of a top level domain name does not distinguish a domain name from an embedded trademark under Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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.
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.
WHOIS information for the at-issue domain name lists “Shuua AE” as the domain name’s registrant however there is nothing in the record that likewise suggests Respondent is commonly known by the <shuaaae.com> domain name apart from the WHOIS record. Moreover, Complainant’s searches for “shuaae” found no associated entities and further research by Complainant indicates that Respondent’s address of record does not exist. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, Respondent uses the at-issue domain name as part of a scheme to impersonate Complainant. Respondent uses the <shuaaae.com> domain name in connection with emails sent by Respondent to third-parties. Because of their return address @shuaaae.com and otherwise, the emails feign being from a senior executive within Complainant’s business. The impersonation of Complainant advances Respondent’s scheme to defraud the emails’ recipients by promising to loan money upon presentation of private financial data. Using the domain name in this manner 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 Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (finding that the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent capitalizes on the likelihood that Internet users will be misled to believe that Respondent is Complainant, or acting with Complainant’s authorization. As mentioned above, Respondent attempts to perpetrate a scheme to defraud by using the email suffix associated with the <shuaaae.com> domain name. Thereby, Respondent has attempted to benefit from the goodwill associated with Complainant by using the <shuaaae.com> domain name as a guise. Such use of the at-issue domain name demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Next as also mentioned above, Respondent uses the confusingly similar domain name to attempt to pass itself off as Complainant. Respondent’s scheme entails pretending to be a high-level executive at Complainant’s company so that it might solicit funds from third parties. Respondent’s behavior disrupts Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Respondent’s use of Complainant’s mark to perpetuate a fraud is a clear indication of bad faith. See, e.g., 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).
Finally, Respondent registered the <shuaaae.com> domain name knowing that Complainant had trademark rights in the SHUAA mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s overt addition of the “ae” geographic identifier to the mark in forming the at-issue domain name, and from Respondent’s foul scheme to profit by using an email address at <shuaaae.com> to impersonate Complainant’s executive. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark demonstrates that Respondent registered and used the <shuaaae.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shuaaae.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 4, 2014
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