O PLUS E HOLDINGS PVT LTD v. Ibrahim Shiyaz / Abode paradise
Claim Number: FA2211002019119
Complainant is O PLUS E HOLDINGS PVT LTD (“Complainant”), represented by Michelle Ray-Jones of Tilleke & Gibbins International Ltd., Thailand. Respondent is Ibrahim Shiyaz / Abode paradise (“Respondent”), MV.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <niyamaprivateisland.com>, registered with Name.com, 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 Forum electronically on November 6, 2022; Forum received payment on November 6, 2022.
On November 7, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <niyamaprivateisland.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 November 8, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2022 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@niyamaprivateisland.com. Also on November 8, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 the owner of Niyama Private Islands Maldives, a luxury resort situated across two islands in the Indian Ocean. The resort first opened in 2012, and the trademark NIYAMA MALDIVES and variations thereof have been used to advertise Complainant’s hotel and resort services for many years.
Complainant claims rights in the NIYAMA MALDIVES mark through registration with the Maldives’ Ministry of Economic Development (“USPTO”).
The at-issue domain name <niyamaprivateisland.com> is confusingly similar because it incorporates a dominant portion of Complainant’s registered mark and differs only through the addition of the terms “private” and “island” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the at-issue domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized Respondent to use the NIYAMA MALDIVES mark in any way. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to an inactive webpage.
Respondent registered and uses the at-issue domain name in bad faith. Respondent seeks to create a likelihood of confusion such that they may financially benefit. Furthermore, Respondent does not make active use of the disputed domain name.
B. Respondent
Respondent responded via an email to the dispute resolution provider stating in significant part: “Please take the domain from my email. I have no interest in holding the domain…”
Complainant has rights in the NIYAMA MALDIVES.
Respondent unequivocally consents to transferring the at-issue domain name to 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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)ii or 4(a)iii, when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case, Respondent agrees to transfer its at-issue domain name to Complainant stating in its email response: “Please take the domain from my email. I have no interest in holding the domain…” The Panel, noting that the parties agree as to the disposition of the at-issue domain names, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced immediately above, as a prerequisite to Complainant obtaining its requested relief ‑ even where Respondent agrees to such relief ‑ Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Notably, without requiring a prerequisite finding under paragraph 4(a)(i) a Complainant lacking rights in an at-issue domain name might, via the UDRP, acquire such domain name(s) from a Respondent that also has no rights in such domain name(s).
Here, Complainant shows it has rights to the NIYAMI MALDIVES mark through its registration of such mark with the Republic of Maldives’ Ministry of Economic Development. Registration of a mark with a trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Furthermore, the at-issue domain name contains a material portion of Complainant’s NIYAMA MALDIVES trademark, followed by the term or terms “private island” with all followed by the “.com” top-level domain name. The differences between the <niyamaprivateisland.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <niyamaprivateisland.com> is confusingly similar to Complainant’s NIYAMA MALDIVES mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, D2015-1445 (WIPO Oct 9, 2015) (determining that Respondent’s incorporation of the word “clash” into a domain conferred standing because “clash” was identical to Complainant’s CLASH OF CLANS mark).
In light of Respondent’s agreeing to transfer the at-issue domain name as discussed above, the Panel finds that further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted and that the domain name should be transferred to Complainant.
Having established that the parties agree to the requested relief and that Complainant has rights in the confusingly similar at-issue domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <niyamaprivateisland.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 6, 2022
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