WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONIFA Hotels & Resorts FZE v. Jaffar SharifCase No. D2008-08951. The Parties1.1 The Complainant is IFA Hotels & Resorts FZE, of Kuwait, represented by Cedar White Bradley Consulting, Dubai, United Arab Emirates. 1.2 The Respondent is Jaffar Sharif, of Abu Dhabi, United Arab Emirates, represented by Rouse and Co. International Limited, Dubai, United Arab Emirates. 2. The Domain Names and Registrars2.1 The disputed domain names are: <arshbilqis.com>, <arshbilqis.net>, <arshbilqisresorts.com>, <arshbilqisresorts.net>, <bilqisempire.com>, <bilqisempireresorts.com>, <bilqisspa.com>, <bilqisspa.net>, <madinatbilqis.com>, <madinatbilqis.net>, <madinatbilqisresorts.com>, <madinatbilqisresorts.net>, <mamlaqatbilqis.com>, <mamlaqatbilqis.net>, <mamlaqatbilqisresorts.com>, <mamlaqatbilqisresorts.net>, <qaserbilqis.com>, <qaserbilqis.net>, <qaserbilqisresorts.com>, <qaserbilqisresorts.net>, <queenofshebaresorts.com>, (the “Domain Names”) and are all registered with GoDaddy.com, Inc. (the “Registrar”). 3. Procedural History3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2008. On June 13, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 13 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for all the Domain Names and providing contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). 3.2 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 June 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2008. The Response was filed with the Center on July 13, 2008. 3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 23, 2008. The Panel finds that it was properly constituted. 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. 3.4 The Panel having reviewed the Complainant noted there were gaps in aspects of the Respondent’s Response and the way in which the Respondent had responded to the Complainant’s allegations. It noted that the facts in this case might be interpreted in a certain manner. However, the Panel also noted that this interpretation was not one that had been previously put to the Respondent, having not formed part of the Complainant’s case. In the circumstances, the Panel decided to issue a Procedural Order seeking further clarification of the Respondent’s case. The Procedural Order was issued on July 31, 2008 and a copy of this Order is attached at Annex A to this decision. It required the Respondent to file a further submission in this matter by no later than August 8, 2008 and provided the Complainant with an opportunity to file a further submission responding to any further submission of the Respondent by no later than August 13, 2008. It also extended the time for the issue of a decision in this matter until August 22, 2008. 3.5 The Respondent served a further submission in this matter on August 8, 2008 in the form of witness statement signed by the Respondent. The Complainant did not serve any response to this supplemental submission of the Respondent. 3.6 On August 14, 2008 the Center received a communication signed on behalf of both parties to these proceedings in which the parties requested that proceedings be suspended for 8 weeks so as to enable them to engage in settlement discussions. By means of a Procedural Order dated August 14, 2008 the Panel acceded to the parties request and ordered that these Proceedings be suspended for 8 weeks (i.e. until October 9, 2008). It also provided for the time for the issue of a decision in these proceedings be extended until 7 days after the suspension of these proceedings came to an end (i.e. until October 16, 2008).1 4. Factual Background4.1 The Complainant is a company organised and existing under the law of Kuwait. It is a developer of hotel and tourism projects. 4.2 One of the Complainant’s developments is the Kingdom of Sheba on the Palm, Jumeirah, Dubai. The Palm Jumeirah is the world’s largest man-made island. The Kingdom of Sheba project contains residences, a five star hotel, and various other facilities including shops, restaurants, pools and beach club. The project was first mentioned in a press release on December 4, 2006. 4.3 The Complainant has applied for and registered various trade marks in relation to the Kingdom of Sheba project in various jurisdictions around the world. They take three forms as follows: (i) The “Blaqis Residence Marks” broadly in the following form: These include Community Trade Mark No. 5636105 dated January 5, 2007 in classes 36, 37 and 43 and 44. (ii) The “Kingdom of Sheba Marks” broadly in the following form: These include Community Trade Mark No. 5636097 dated January 5, 2007 in classes 16, 35, 36, 41, 43 and 44. (iii) The “Additional Kingdom of Sheba Applications” broadly in the following form: These include Community Trade Mark Application No. 6701502 dated February 2, 2008. As far as the Panel can tell on the evidence filled with the Complainant, no mark of this type has proceeded to registration. 4.4 Most of these marks also contain Arabic text that is equivalent to the English text that appears in the mark. That Arabic text is located between the figurative and textual elements of the marks portrayed above. The Baqis Residence Marks and Kingdom of Sheba Marks have been opposed by the Respondent in the United Arab Emirates. 4.5 The Complainant also registered the domain names <kingdomofsheba.net>, <kingdomof sheba.com>, <kingdomsheba.net> and <kingdomsheba.com> on December 13, 2005. It registered the domain names <balqisresidence.net> and <balqisresidence.com> on December 12, 2006. 4.6 The Respondent is an interior designer and consultant to the design and construction industry. His career spans over 30 years and several of his projects have won awards, including the Tented Structure Project in Kuwait, which won the British Constructional Steelwork Association award in 1992. 4.7 The Respondent is involved with various design and construction companies. One of these is Marib Holdings LLC, a company based in Abu Dhabi and established under the laws of the United Arab Emirates. Marib Holdings was established to plan, design and develop the Mamlaqat Balqis Project, which equates in English to the “Kingdom of Balqis” project. Balqis is better known in English speaking countries as the Queen of Sheba. The planned development is described by the Respondent as being “an ambitious project in Abu Dhabi comprising a luxury resort with a strong educational/archaeological focus”. 4.8 The Respondent registered the Domain Names on the November 6 and 7, 2006. 4.9 In January 2007 the Respondent has, together with a Mr. Farouq Jaafar Mohammed Sharif, applied for a number of trade marks in the United Arab Emirates. An example of one of these applications is no. 89605 in class 43 in the following form: It can be seen that the application is in respect of a medal design in the centre of which is a representation of a face and Arabic text. Below the medal is a transliteration of that text in Latin script. Most of the Respondents other applications adopt a similar form, but with the text used in those cases being Madinat Balqis, Mamlaqat Balqis, Balqis Resort, Arsh Balqis, and Qaser Balqis. 4.10 These trade mark applications have all been opposed by the Complainant. 4.11 The following is a list of transliterations of Arabic terms and their English meanings, which are of relevance in these proceedings: (i) Arsh – throne (ii) Balqis (or sometimes “Bilqis”) – a Middle Eastern name and the name of the Queen of Sheba (iii) Madinat – city (iv) Mamlaqat - kingdom (v) Qaser - palace 4.12 At all relevant times the Domain Names have been parked with Registrar’s domain name parking service. The links appearing on the domain name parking pages have varied significantly. For example, back in June 2008 many of these pages contained “sponsored links” to hotels and holiday resorts (for example the Domain Name <queenofshebaresorts.com>), whilst others had no links at all (for example <qaserbilqis.com>). These domain name parking pages continue to operate at the date of this decision. 5. Parties’ ContentionsA. Complainant5.1 The Complainant contends that each of the Domain Names is confusingly similar to at least one of its registered trade marks. In particular: (i) All of the Domain Names incorporating the term “arshbilqis”, “bilqispa”, “madinatbilqisresorts”, or “madinatbilqis”, or “quasarbilgis” (i.e. 14 of the 21 Domain Names) are said to be confusingly similar to at least one of the Complainant’s Balqis Residence Marks. (ii) The Domain Names comprising the term “bilqisempire” or “mamlaqatbilqis” (i.e. 6 of the 21 Domain Names) are said to be confusingly similar to at least one of the Complainant’s Balqis Residence Marks and at least one of the Complainant’s Kingdom of Sheba Marks. (ii) The Domain Name <queenofshebaresorts.com> is said to be confusingly similar to at least one of the Complainant’s Kingdom of Sheba Marks. 5.2 The Complainant contends that since the Domain Names have all been parked with a parking service the Respondent does not appear to be engaged in any commercial activity using the Domain Names, and therefore has not gained any rights by reason of the use of these terms. It notes the Respondent’s trade mark applications but claims that they will all “ultimately fail to proceed to registration”. It also refers to its various registered trade marks and trade mark applications and claims that as a result it has “superior rights” in those marks and applications. In the circumstances, it claims that the Respondent has no right or legitimate interest in any of the Domain Names. 5.3 On the question of bad faith it refers to the fact that the Domain Names were all registered about four weeks prior to the public launch of the Complainant’s project. It claims that it is “highly likely that the news of the Complainant’s project had leaked into the market well before the official launch”. Particular emphasis is placed on the fact that nearly all the Domain Names use the term “Bilqis” and not “Balqis”. From this it is said that it can be inferred that the Respondent had “heard” of the Complainant’s project since the term “Balqis” is often spoken as “Bilqis”. It notes that when the Respondent sought to register his own trade marks after the announcement of the project, the term “balqis” was used in those trade marks instead. 5.4 From this the Complainant concludes: “that the purpose of the Respondent registering the domain names the subject of this proceeding was either to prevent the Complainant from registering domain names relevant to its Kingdom of Sheba and Balqis Residence project and/or ultimately to sell the registrations to an interested party – the most obvious being the Complainant, but possibly also a competitor.” 5.5 The Complainant also states that it is a “possibility” that the Respondent has registered the Domain Names in order to benefit commercially from diverting traffic, but states that there is “no evidence that the Respondent is engaged in any kind of business activity using the [D]omain [N]ames”. B. Respondent5.6 The Respondent refers to his Mamlaqat Balqis Project, which he claims was conceived in 2002. He provides evidence of his having visited Yemen twice in 2002 and it is claimed that this visit was “to research the History of the Queen of Sheba”. He also provides evidence of having instructed Saeed Omar to design logos for his project in August 2006. Further evidence is offered in relation to work on this project in late 2007. 5.7 So far as the Complainant’s claims under the Policy are concerned, the Response submits as follows: (i) This is a complex trade mark dispute which according to the Respondent should be determined by the trade mark registry or the Courts. The parties have opposed each other’s UAE trade mark applications for trade marks featuring the words “Sheba and Balqis”. Therefore, this is said not to be the type of cybersquatting case envisaged by the ICANN policy. (ii) The Respondent claims that the Complainant does not have any valid trade mark rights upon which to oppose the Respondent’s registration and use of the Domain Names. The Respondent appears to claim (although this is not clear) that the Complainant has registered or applied to register trade marks that comprise the words “Kingdom of Sheba” and “Balqis Residence” and these applications have been opposed. So far as the specific trade marks identified in the Complaint are concerned, it is claimed that the “strong pictorial and Arabic script elements” of the Complainant’s marks, are said to make them “irrelevant to this dispute”. Reference is also made in this respect to the renown and fame of the story of the “Queen of Sheba” or “Queen Balqis”, the fact that Balqis is a common girl’s name in the Middle East and that the term Sheba is commonly used for real estate, hotel and restaurant services with a luxurious and Middle Eastern or Ethiopian flavour. From this the Respondent contends that the Complainant’s trade marks are “devoid of distinctive character”. (iii) The trade marks and the Domain Names are said to be “obviously dissimilar”. The Respondent then proceeds to undertake a comparison between each Domain Name and the marks said to be relied upon in this respect, making claims of visual, aural and conceptual dissimilarity in each case. It is not necessary to set these contentions in full. However, a number of points are worth recording. These are: (a) Reference is made to the fact that most of the Domain Names use the term “bilqis” and the Complainant’s Balqis Residence Marks use the spelling “balqis”. (b) The terms “arsh”, “spa”, “resorts”, “qaser” and “madinat” that appear in a number of the Domain Names are said to be conceptually, visually and aurally dissimilar to the term “Residence” that appears in the Complainant’s Balqis Residence Marks. (c) The term “Empire” that appears in a number of Domain Names is said to be conceptually, visually and aurally dissimilar to the term “Kingdom” that appears in the Complainant’s Kingdom of Sheba Marks. (iv) The Respondent’s involvement in the Mamlaqat Balqis Project is said to give him a legitimate interest in registering and using the Domain Names. Further, this combined with the alleged descriptive element of the Domain Names is said to mean that the Complainant’s claims of bad faith are misconceived and have no evidential basis. 5.8 As has already been recorded above, the Panel sought clarification of aspects of the Respondent’s case. Particular points of concern were: (i) The Respondent did not appear to deny the Complainant’s contentions that it was aware of the Complainant’s project at the time of registration of the Domain Names; and (ii) The Respondent did not explain why he chose to incorporate the term “Bilqis” and yet then proceeded to make application to register trade marks that used the term “Balqis”. 5.9 In response to the Panel’s First Procedural the Respondent filed a witness statement from the Respondent. In that witness statement the Respondent stated that for a long time he has had a fascination with the Queen of Sheba story. He states that he first discussed the Mamlaqat Balqis project with potential business partners in 2002 and whilst he had made visits to Yemen to research the subject further, his involvement a different project meant that he only returned to the Mamlaqat Balqis project in mid 2006. 5.10 The Respondent claims that thereafter the following took place. (i) He decided that it would help to have some logos that could be used in presentations and pitches to potential partners for the project. He therefore commissioned a third part designer to produce these logos on August 12, 2006. (ii) He decided to register a series of Domain Names in November 2006. His explanation for doing so and why he registered so many different domains is as follows: “I wanted to make sure that no one else could use such generic names for domain names for a resort (which I suspected I might be unable to stop if they got their registrations in first), and I wanted to ensure the widest freedom to choose the eventual operative domain names for the Mamlaqat Balqis project … I do not think it is possible to properly characterize a project like this until around 12 months prior to its launch. So, at the time of registration, I was not aware if the eventual project would have a spa (but that seemed likely); and I was not sure whether it should be best described as resorts, a kingdom, an empire, a palace, a throne or a city. That is why I registered a large number of domain names. … [A]t the time I registered the first Domain Names I believed that the more commonly accepted spelling of the Queen of Sheba’s name was Bilqis. That is how it appears in the Bible, which could be thought of as the ‘official’ English transliteration of the name. However, I later realised that everyone in the Middle East writes it differently” (iii) The Respondent discovered that that “Balqis” was a more common spelling than “Bilqis”, as a result of work undertaken in November 2006 by image consultants that he had engaged. Therefore, in December 2006 he registered more than fifty (50) further domain names in which he used the spelling “Balqis”2. (iv) He first heard about the Complainat’s project in March 2007, when the project was mentioned to him by his “contacts”. 6. Discussion and Findings6.1 Under the Policy the Complainant must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that: (i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and (iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)). 6.2 The Panel will consider each of these requirements in turn. However, before doing so it is first convenient to address the Respondent’s assertion that this case form part of a wider and more complicated trade mark dispute between the parties and therefore this case should be left to the courts to determine. 6.3 The Panel certainly accepts that there is broader dispute here between the parties and that the Panel should be wary of trespassing into areas that are the preserve of the relevant trade mark registries in which that dispute is ongoing. However, it does not follow simply from the fact of the existence of parallel proceedings that a Panel should refuse to consider the substance of the Complaint. Instead the Panel believes that the correct approach is to examine each of the requisite elements of the Policy in turn. In the context of that examination it may become apparent that there is a substantive factual dispute between the parties that cannot be resolved under the Policy and/or is being addressed and/or can be better determined in another forum. Only at this stage does the question raise its head whether the Panel should decline to consider that issue further. 6.4 It is worth noting in this respect that the Respondent’s lawyers have raised issues such as validity and distinctiveness that proceedings under the Policy are ill-equipped to assess3 and are better determined by a court or a trade mark registry than a panel in proceedings under the Policy. However, as will become apparent, the Panel has found these submissions to be of limited relevance to these proceedings. Trade mark infringement and validity proceedings are not the same as proceedings under the Policy.4 A. Identical or Confusingly Similar6.5 The Complainant clearly is the owner of a number of registered trade marks in a number of jurisdictions. The Respondent claims to have opposed certain applications in the United Arab Emirates but as has already been noted, it would appear that these do not form part of the set of marks that are relied upon by the Complainant in this case. Even if they were, there are clearly subsisting marks that the Respondent has not sought to invalidate or oppose. These include the Community Trade Marks Nos. 5636105 and 5636097. Further, where a mark has proceeded to grant a panel will rarely entertain arguments to the effect that a trade mark that is relied upon is in some manner invalid (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Therefore, the Respondent’s claims of invalidity do not assist it. 6.6 Second, the Respondent seems to contend that since the Complainant’s marks contain significant non-textual elements they should be disregarded from the outset. The Panel disagrees. There are differing views expressed in cases under the Policy as to how marks that contain both textual and non-textual elements should be treated when it comes to assessing confusing similarity. One view is that the non-textual elements can be disregarded, whilst the other is that the non-textual elements can be taken into account and this may be a factor that makes confusing similarity less likely (see Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS WIPO Case No. D2005-0035). The Panel is of the view that the second view is the right one, but it does not follow from this that the Complainant’s marks can be simply dismissed. 6.7 Further, the Panel has not found persuasive the Respondent’s arguments that the textual elements of the Complainant’s marks are descriptive and lack distinctiveness5. First the Panel is unconvinced that the textual elements of the marks are descriptive of all the goods and services for which the Complainant’s marks have been registered. Second, it is rare for a Panel to take such factors into consideration when undertaking the assessment of confusing similarity. Essentially the assessment undertaken is merely a comparison of, and an assessment of the degree of similarity that exists between, the relevant domain name and marks. 6.8 That is not to say that these factors are of no relevance to proceedings under the Policy. The alleged generic nature of a term or the degree to which that term is commonly used in a particular industry may all be highly relevant to the assessment of rights and interests and bad faith. However, they are rarely relevant to the necessary assessment under paragraph 4(a)(i) of the Policy. 6.9 Further, the Panel also notes that there have been a large number of decisions under the Policy that have suggested that the confusing similarity test involves a “low threshold” (see for example, Asset Marketing Systems, LLC v. Silver Lining, WIPO Case No. D2005-0560 and Linear Technology Corporation v. Spiral Matrix, WIPO Case No. D2006-0699). 6.10 With this in mind the Panel turns to the marks and Domain Names in issue. 6.11 So far as the Balqis Residence Marks are concerned, whilst the marks contain a strong figurative element, the words “Balqis Residence” are a prominent feature. Of these two words the word “Balqis” is the most distinctive. The Panel also takes note of the fact that this term appears in Arabic script in a number of the marks. All of the Domain Names save one contain the term “bilqis”. The term “bilqis” forms a distincitive, if not the most distinctive, element of each these Domain Names. On the Respondent’s own case, this merely represents an alternative transliteration of the term “Balqis” from Arabic. In the Panel’s opinion these facts are sufficient for it to reach a finding of confusing similarity. 6.12 The one Domain Name that does not contain the term “bilqis” is <queenofshebaresorts.com>. In this case the marks that have the closest similarity are the Kingdom of Sheba Marks. Again whilst the Kingdom of Sheba Marks contain a strong figurative element, the text “Kingdom of Sheba” is a prominent element. The most distinctive element of the <queenofshebaresorts.com> Domain Name is the term “Queen of Sheba” and there is a high degree of similarity between this term and the textual element of the Kingdom of Sheba Marks. The terms “of Sheba” are common to each and there is an obvious conceptual similarity between the terms the “Queen of Sheba” and “Kingdom of Sheba”, one being the likely monarch for the other. Again the Panel concludes that these facts are sufficient for it to reach a finding of confusing similarity. 6.13 In the circumstances, the Panel concludes that in relation to all of the Domain Names the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests6.14 One of the unusual aspects of this case is that it appears unlikely that the Respondent actually intends to use any of the Domain Names (save perhaps the Domain Name <queenofshebaresorts.com>). Seemingly more likely is that he will use one or a number of domain names that incorporate the term “Balqis” as his own trade mark applications incorporate that spelling6. This in turn raises the question whether an entity can really be said to have a legitimate interest in domain names that may not be used and which are variants of another mark it uses. There may be an analogy here with the situation where a trade mark owner registers a common misspelling of his own mark. However, in this case it is an alternative spelling rather than a misspelling that has been registered. 6.15 However, given the findings of the Panel on the question of bad faith registration and use there is no need to consider this issue any further. C. Registered and Used in Bad Faith6.16 As has already been explained above, the Respondent did not initially seek to deny that he was aware of the Complainant’s project at the time he registered the Domain Names. Further, no explanation was offered as to why he registered Domain Names that spelled “Balqis” in a different way to that in his subsequent trade mark applications. Given the importance of the knowledge and intent of a registrant when it comes to an assessment of the question of bad faith under the Policy, these were crucial omissions. 6.17 It does not necessarily follow from the fact that a respondent is aware of a complainant’s interest in a term that the registration of a domain name that incorporates that term will be in bad faith. Usually a complainant will need to show that the registration was with the intention of taking advantage of the reputation of the complainant’s mark or in some way to disrupt the complainant’s business. In a case where two entities are engaged in a broader fight as to who can use a particular name this can be particularly difficult issue to resolve. The question may need to be asked, what was the primary or predominant purpose of the registration. However, if a respondent does not have knowledge, then this question does not even arise. 6.18 In this case there has never been any doubt that the Respondent is a businessman who is engaged in a property development that to some extent or other has a “Balqis” theme. Papers were put before the Panel to this effect in the initial Response. The difficulty has been in assessing when he knew about the Complainant’s alternative “Balqis” project and what was the Respondent’s primary motive in registering the Domain Names. 6.19 The Respondent has now put forward evidence unequivocally stating that he did not have knowledge of the Complainant’s project until March 2007. That evidence takes the form of a witness statement from the Respondent himself. He has also put forward a plausible explanation as to why he initially chose to register Domain Names that used the spelling “Bilqis” rather than “Balqis”. On the other side the Complainant’s assertions of knowledge are far from compelling. According to the Complainant’s own case, it did not issue a press release in relation to its project until four weeks after the Domain Names were registered. In the circumstances, the Complainant is forced to assert that news of its project must have “leaked”. However, it does not, or is unable to, bring forward any evidence to support that assertion. 6.20 There are aspects of the Respondent’s case that the Panel still to this day finds puzzling. The Respondent initially put in evidence in the form of copies of the logos prepared by Saeed Omar together with a “receipt voucher”. This work is said to have been undertaken in August 2006, i.e. before the Respondent says he learnt that the more common spelling was “Balqis” rather than “Bilqis”. However, all of the designs use the spelling “Balqis” and a “receipt voucher” dated October 30, 2008, which is stated to be in settlement of “LOGOS DESIGN FOR BALQIS & MARIB NAMES” (emphasis added). Nevertheless, it is too big a step from this material alone to reach the conclusion that the Respondent’s assertions are false. 6.21 The Complainant bears the burden of proof of showing the elements of the Policy are satisfied in this case. It has been unable to prove that the Respondent was aware of the Complainant’s project at the time that the Domain Names were registered and therefore that the Respondent registered the Domain Names in bad faith. The Complainant has therefore failed in this case to make out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision7.1 For all the foregoing reasons, the Complaint is denied. Matthew S. Harris Date: October 16, 2008 WIPO Arbitration and Mediation CenterAnnex APROCEDURAL ORDER NO. 1IFA Hotels & Resorts FZE v. Jaffar SharifCase No. D2008-0895WHEREAS the Panel has reviewed the case file and, without prejudice to any subsequent findings of fact or law or any decision on the interpretation of any aspect of the Uniform Dispute Resolution Policy (the “Policy”), notes as follows: (i) The Respondent does not deny the Complainant’s claim (para C (b) at page 20 of the Complaint) that the Respondent was aware of the Complainant’s Queen of Sheba related development project prior to registration of the domain names in issue in these proceedings (the “Domain Names”). (ii) The Respondent claims that he registered the Domain Names in connection with his own development project connected with the Queen of Sheba. However, little or no additional explanation is provided as to why he chose the specific domain names he did and why he chose to register them in November 2006. In this respect the Panel notes that: (a) the Respondent does not explain why he chose to incorporate the term “Bilqis” (as opposed to “Balqis”) in many of the Domain Names; and (b) the Respondent does not claim to have registered any domain names in addition to the Domain Names in connection with his project. (iii) The Respondent contends that he has made serious preparation to use the Domain Names for his project (Response para 40) but provides no evidence of any preparations to use any of the specific terms incorporated in the Domain Names. All the evidence provided shows the Respondent using the “Balqis” rather than the “Bilqis” name in connection with his project. (iv) Even if the Panel were to discount the fact that the Domain Names for the most part use the term “Bilqis” rather than “Balqis”, there is no evidence before the Panel of the Respondent having prepared material using names that might be said to correspond to the Domain Names prior to an invoice from the Saeed Omar printing and design service dated October 28, 20067. (v) One possible interpretation of the relevant events in this case is as follows: (a) The Respondent has for a number of years been working on a development project that has associations with the Queen of Sheba. (b) At some point prior to October 28, 2006 (but no earlier than August 2006) the Respondent settled on a series of names that might be used in connection with aspects of his project. By October 28, 2006 Saeed Omar had prepared a series of logos embodying those names that might be used in connection with this project (c) At about this time the Respondent came to learn of the Complainant’s separate Queen of Sheba related project. He then proceeded to register the Domain Names so as to prevent the Complainant from using those names (perhaps because he was worried that if the Complainant registered any of the Domain Names this might result in confusion). (d) The Respondent was under the mistaken belief that the Complainant would use the “Bilqis” rather than the “Balqis” spelling for the Queen of Sheba. It is for this reason that the Domain Names were registered using a spelling different from that being used by the Respondent (vi) The Respondent is legally advised and accordingly should already be aware of the importance of fully disclosing of the circumstances surrounding the registration of domain names the subject of proceedings under the Policy8. Nevertheless, the interpretation of events set out in paragraph (v) above has not previously been put to the Respondent. The Panel is therefore minded to provide the Respondent with an opportunity to clarify its case in these respects. Any failure to provide that clarification may result in the Panel drawing inferences of fact adverse to the Respondent. (vii) Evidence in the form of a statement from the Respondent (whether in the form of an affidavit, witness statement or otherwise) explaining why the Domain Names were registered is likely to be evidentially more persuasive than assertions from the Respondent’s lawyers or advisors in relation to these issues. The Panel, pursuant to paragraphs 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, HEREBY MAKES THE FOLLOWING ORDER: (1) The Respondent shall, by no later than 6:00 pm British Summer Time (BST) on Friday, August 8, 2008 file a further submission in these proceedings together with supporting documents or evidence addressing the issues identified in the recitals to this Order. (2) The [Complainant] may, by no later than 6:00 pm BST on Wednesday, August 13, 2008 file a further submission in these proceedings limited to the facts and matters raised in any further submission filed by the [Respondent] in accordance with paragraph (1) of this Order together with any supporting documents or evidence in relation to the same. (3) Any submission filed pursuant to paragraphs (1), or (2) of this Order: (i) shall be forwarded to the Center by email in accordance with paragraph 3(b) of the WIPO Supplemental Rules; (ii) must include a declaration (suitably amended) as follows: “[name of party making submission] certifies that the information contained in this submission is to the best of the [name of party making submission] knowledge complete and accurate, that this submission is not being presented for any improper purpose, such as to harass, and that the assertions in this submission are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” (iii) must either be in a form that is text searchable (for example, a .doc Word document or a text searchable .pdf document) or be accompanied by a copy that is text searchable. (4) The Panel hereby extends the time by which a decision shall be issued in these proceedings until Friday, August 22, 2008. Matthew S. Harris Date: July 31, 2008 1 A request for a further extension from the parties was received by the Center on October 16, 2008 after a draft of this decision had been forwarded by the Panel to the Center, which the Center brought to the Panel’s attention. The Panel then authorized the sending to the parties by the Center of the following communication (which was sent on October 21, 2008): “Dear Parties, The Center acknowledges receipt of your communication of October 16, 2008 (attached), requesting a further suspension of proceedings. The Center notes that this request was received after the Panel had concluded its drafting of the decision in this matter, although the decision itself has yet to be formally notified. The Center has brought the request for further suspension to the Panelist's attention. The Panel has noted the fact that the proceedings have already been extended for what, in the context of expedited UDRP proceedings, is a very significant period indeed. The Panel believes that the parties have already had ample time to amicably settle the matter, and is not minded to grant the further four week extension sought. However, in view of the Respondent's apparent agreement to the Complainant's request, the Panel agrees to grant the parties a further five (5) business days to attempt to settle the matter. No further extension will be granted by the Panel. If no request to withhold the decision and terminate the matter on grounds of settlement has been received by the Center from the Complainant by October 28, 2008, the Panel's decision shall be issued directly thereafter. Sincerely,
[Relevant Case Manager] Case Manager WIPO Arbitration and Mediation Center” No request to withhold the decision and terminate the matter on grounds of settlement (or indeed other communication) was received by October 28, 2008. The Panel subsequently authorized the Center to release its Decision and proceed to notify to the parties and registrar. 2 These Domain Names are the subject of separate complainant IFA Hotels & Resorts FZE v. Buthaina Sharif, WIPO Case No. D2008-0835. 3 Indeed at times the Panel wonders whether parts of the Response have been taken from documents used in other proceedings. For example, when conducting an assessment of confusing similarity the Respondent appears to refer to a BALQIS RESIDENCE word mark or application. However, as far as the Panel can tell the Complainant does not rely upon any such application for a mark for the purposes of these proceedings. Similarly, there is a reference in the Response to “MAMLAQAT SABAA (in Arabic) and logo” mark, but again this does not appear to be a mark upon which the Complainant relies. 4 See Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372. 5 It seems obvious that the marks as a whole in light of their design elements are unlikely to lack distinctiveness, but the Panel understands the Respondent to be contending that the textual elements of the marks relied upon by the Complaint lack distinctiveness and this decision proceeds on this basis. 6 The Panel notes that at Exhibit 8 to his witness statement the Respondent appends a table setting out projected uses for his domain name portfolio and that the Domain Names are included in this list. However, it seems unlikely that this vary large number of domain names are all intended to be used for one project save in the limited sense that they may be used to redirect Internet users to smaller number of sites associated with the project. Indeed, the Respondent’s own evidence is that he registered such a large number of Domain Names in order to keep his options open as to which “Bilqis” domain names he might subsequently use. 7 The Panel notes that the Respondent contends that Saeed Omar was commissioned to design these logos on August 12, 2006 (Response para 43) but the Response is silent as to what form that commission took and whether and to what extent the names chosen embodied in those logos had already been chosen at that date. 8 Reference is made to the comments of the panel at paragraph 6.3 to 6.6 of The Generations Network, Inc. v. 6684874 Canada Inc. WIPO Case No. D2008-0606 (although the Panel accepts that the factual circumstances of that case are somewhat different).
: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-0895.html
: |
|
|