The Complainant is BR IP Holder LLC of Canton, Massachusetts, United States of America, represented by Plave Koch PLC, United States of America.
The Respondent is Ali Abdelwahed (AEORG-MAHMEDO) of Sharjah, United Arab Emirates.
The disputed domain names <baskin-robbins.ae> and <baskinrobbins.ae> are registered with the AE Domain Administration (.aeDA).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2009. On July 15, 2009, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain names. On July 16 and 26, 2009, .aeDA transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain names. The Center verified that the Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for .ae (the “Policy” or “aeDRP”), the Rules for Domain Name Dispute Resolution Policy for .ae (the “Rules”), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy for .ae (the “Supplemental Rules”).
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 July 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2009.
The Center appointed David Perkins as the sole panelist in this matter on September 8, 2009. 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.
The following email correspondence between the Complainant and the Respondent should be noted.
Following communication on July 14, 2009 (July 15, 2009 Geneva time) to the Respondent that the Complaint had been submitted, on July 15, 2009 the Respondent emailed the Complainant's counsel in the following terms:
“All of the domains will expire in a month and I don't plan to renew them or anything, they haven't been sold or transferred or anything at all, they don't even have a webpage or any hosting. Please inform the concerned parties to register them as soon as they expire and that its their marketing departments responsibility to register their domain names and protect their domain identities in every country of the world.
Thanks.”
On July 16, 2009 the Complainant's counsel replied providing terms for transfer of inter alia the two disputed domain names.
The same day the Respondent replied as follows:
“I agree to everything, please prepare the required paperwork and I will sign it. I am very busy and on a business trip and will not be able to prepare the documents on time. so please prepare all the required documents and I will sign them and fax tem where ever. Regarding IP Mirror, I handle everything online and it will be easy for me to conclude all matters with them.
Ali Aman.”
On July 17, 2009 the Complainant's counsel sent detailed instructions to the Respondent to enable him to transfer the two disputed domain names (including three other domain names not the subject of this administrative proceeding).
In the absence of a reply from the Respondent to that email, on July 28, 2009 the Complainant's counsel emailed the Respondent requesting him to take the necessary step to facilitate transfer by July 30, 2009.
On July 31, 2009 the Center suggested that the parties might suspend this proceeding to explore settlement. On August 11, 2009 the Complainant's counsel notified the Center that, in the absence of a response from the Respondent enabling transfer of the disputed domain names, the Complainant did not wish to suspend the proceeding.
On August 12, 2009 the Respondent emailed the Center and the Complainant's counsel in the following terms:
“These domains will expire in 2 days on August 14, 2009, so there is no need to proceed with the case since I don't plan on renewing the domain.”
On the same date the .ae Registry confirmed to the Center that the disputed domain names would be kept in lock status after expiry of the renewal date until conclusion of this administrative proceeding.
On August 19, 2009 the Complainant's counsel reiterated the Complainant's wish to proceed with the Complaint given the Respondent's inaction and the history of the matter.
On the same date, the Respondent emailed the Complainant's counsel as follows:
“Hello [the Complainant's lawyer]
I have reviewed all the recent emails, and no final settlement was offered for the domains.
Also to transfer the domains it will cost me about $100 each domain via IP Mirror. If you are willing to refund me this amount for each domain plus $500 for each domain which includes registration costs and operations, I will happily conclude this ASAP.
Thanks
Ali Aman.”
On August 20, 2009 the Complainant's counsel replied rejecting the Respondent's above terms, notifying him that the Complainant would request the Center to proceed with this Complaint.
On August 26, 2009 following notification of Respondent's default on August 25, 2009 the Respondent emailed the Center in the following terms
“Thank you [Case Manager]
I am no longer the owner of the domains since they have expired and I no longer have any authorization or control over the domains to transfer or change or modify any details pertaining to them. Thus there is no need to proceed with the case since I have no connection to the domains any more.
Thanks.
Ali Abdelwahed.”
In the circumstances, it is apparent that there has been no concluded settlement of this dispute, which now falls to be decided.
4.A.1 The Complainant is the transferee of the BASKIN ROBBINS trademarks which have been extensively used by the Complainant, its predecessors and “Baskin Robbins” franchisees since 1953.
4.A.2 The Complainant is the proprietor of the following registered trademarks as the successor-in-interest to the original registrant, Baskin-Robbins International Company.
|
Country |
Reg. No. |
Mark |
Classes |
Dates of Application and Registration |
|
United States of America |
712,570 |
BASKIN-ROBBINS 31 ICE CREAM |
46 |
Filed January 26, 1959 Registered March 14, 1961 |
|
United States of America |
1,185,045 |
BASKIN-ROBBINS |
46 |
Filed October 27, 1980 Registered January 5, 1982 |
|
United Arab Emirates |
40791 |
BASKIN 31 ROBBINS |
29 |
Filed October 7, 2002 Registered June 1, 2003 |
|
United Arab Emirates |
40809 |
BASKIN 31 ROBBINS |
43 |
Filed October 7, 2002 Registered June 1, 2003 |
4.A.3 The Complainant says that it has obtained registrations for its BASKIN ROBBINS trademarks in more than 35 countries around the world.
4.A.4 The Complainant is the world's largest hard serve ice cream franchise, with more than 6,000 outlets in 35 countries, serving 3.7 million people each week. There are currently 108 BASKIN ROBBINS shops in the Respondent's country, the United Arab Emirates (“UAE”), which are operated by a licensee of the Complainant. The first BASKIN ROBBINS shops in the UAE opened in 1978. There are a total of 450 BASKIN ROBBINS shops in the Gulf region, of which the UAE forms a part, within a further 50 such shops planned to be opened during the next twelve months.
4.A.5 Between September 2000 and December 2007, the Complainant, its predecessors and “Baskin Robbins” franchisees spent approximately USD140 million on advertising and promoting the BASKIN ROBBINS name, and in 2007 alone spent over USD 22 million on advertising and promotion.
4.A.6 The Complainant exhibits material from its website at the domain name <baskinrobbins.com>.
4.A.7 The Complainant says that its first knowledge of the disputed domain name was when one of its franchisees received an unsolicited email from the Respondent on November 15, 2008. The Respondent offered to sell two domain names, <baskinrobbins.ae> and <dunkindonuts.ae> for $15,000.00, failing which it would be auctioned off to the highest buyer. On December 17, 2008 the Complainant counter offered to pay AED 150.00 per domain name by way of reimbursement for the registration fees for those two domain names and a further two domain names registered by the Respondent, including <baskin-robbins.ae>. The Complainant also advised the Respondent that it owned registered trademarks in the UAE for BASKIN-ROBBINS.
4.A.8 The Respondent did not reply to that counteroffer and, after seeing online advertisements by the Respondent to sell, inter alia, the disputed domain names, on April 23, 2009 the Complainant's counsel sent the Respondent a “cease and desist” letter. A follow-up email was sent by them to the Respondent on April 29, 2009 requesting the Respondent to take the actions needed to transfer those domain names to the Complainant. The correspondence after notification of this Complaint on July 14, 2009 is summarized in paragraph 3 above.
In the absence of a Response, all that is known of the Respondent is set out in the Complaint and in the party and party email correspondence summarized in paragraphs 3 and 4.A.7 and 8 above,. The disputed domain names were registered by the Respondent on August 14, 2008 and by his own admission never used to link to an active website: see, paragraph 3 above, Respondent's email of July 15, 2009.
5.A.1 The Complainant is the proprietor of, inter alia, the BASKIN-ROBBINS registered trademarks in the United States of America (“US”) and in the UAE set out in paragraph 4.A.2 above.
5.A.2 The <baskin-robbins.ae> domain name is identical to the Complainant's US trademark registration number 1,185,045 filed in 1980 and issued in 1982.
5.A.3 The <baskinrobbins.ae> domain name is also identical to that registered trademark but for omission of the hyphen.
5.A.4 The Complainant also relies upon its registration of the BASKIN ROBBINS marks in 35 countries worldwide and to the BASKIN ROBBINS name and mark being distinctive and well-known, both internationally and in the UAE.
5.A.5 The Complainant says that the Respondent is neither licensed nor otherwise authorised to use the BASKIN ROBBINS marks,. Only the franchisees and licensees of the Complainant's affiliates are authorised to use the BASKIN ROBBINS name and mark. The Respondent is neither a franchisee nor a licensee.
5.A.6 The Complainant says that when the Respondent registered the disputed domain names in August 2008 he was on constructive notice of its BASKIN ROBBINS trademarks registered in both the United States of America since 1961 and in the UAE since 2003. The Complainant says that the Respondent would also have been on notice of the BASKIN ROBBINS name and mark by virtue of both the international fame of that mark and also the fact that it has been used in the UAE since 1978.
5.A.7 Consequently, the Complainant says that the Respondent cannot assert bona fide or fair use of either of the disputed domain names, nor can he demonstrate that either he as an individual or as a business has ever been commonly known by either domain name. In short, the Respondent cannot demonstrate that he can bring himself within any of the circumstances set out in paragraph 6(c) of the Policy. Indeed, the Complainant says, the Respondent's offers to sell the disputed domain names to the highest buyer is indicative of lack of bona fide rights to or legitimate interests in those names: see, paragraph 3 and 4.A.7 to 8 above.
5.A.8 As further evidence of the Respondent's lack of bona fides the Complainant exhibits the Respondent's advertisements to sell the disputed domain names through two websites, “www.bazaar.ae and www.uaeinsider.com”, together with domain names incorporating the well-known trademarks of third parties, including <gillette.ae>; <costacoffee.ae>; <dominos.ae>; <mothercare.ae> and <heinz.ae>
5.A.9 Here, the Complainant refers to the Respondent's offer to sell at auction both the disputed domain names and other domain names incorporating well-known third party trademarks, which the Complainant says evidence circumstances set out in paragraph 6(b)(i) of the Policy. The Complaint cites a number of decisions under the Policy where such activity has been found to constitute bad faith registration and use. Those decisions include Yahoo! Inc v. Fady Alassahd a/k/a Fady Al Assaad, WIPO Case No. DAE2008-0001; Yahoo! Inc v. Pham, NAF Claim No. FA109699; eBay, Inc v. Akram Mehmood, WIPO Case No. DAE2007-0001 and Sony Ericsson Mobile Communications International AB and Others v. Mohamed Ali Aal Ali, WIPO Case No. DAE2006-0002.
5.A.10 As to registration in bad faith, in addition to the well-known status of the BASKIN ROBBINS trademarks and the registered trademarks set out in paragraph 4.A.2 above, the Complainant points to the Respondent's false representation and warranty in Clause 4.3 of the Registration Agreement whereunder he warranted that neither of the disputed domain names would infringe the rights of any third party. See, also in that respect paragraph 4 of the Policy.
5.A.11 The Complainant also asserts that the above summarized activities by the Respondent fall within paragraph 6(b)(ii) of the Policy, again citing decisions under the Policy where similar facts were found to constitute bad faith registration and use. As to “pattern of conduct”, the Complainant refers to the other domain names registered by the Respondent which incorporate well-known third party trademarks: see, paragraph 5.A.8 above.
5.A.12 The Complainant also relies on paragraph 6(b)(iv) of the Policy citing the Respondent's passive holding of the disputed domain names in the context of the Complainant's rights in the world famous BASKIN ROBBINS trademarks.
5.A.13 Also, the Respondent's failure to transfer the disputed domain names and his continued offer of those names for sale even after receipt of the April 23, 2009 “cease and desist” letter is, the Complainant says, additional evidence of bad faith use. Again, the Complainant cites a number of decisions under the Policy that have found a Respondent's failure to respond positively to a “cease and desist” letter invites an inference of bad faith.
As noted, no Response has been filed.
6.1 Policy paragraph 6(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered or is being used in bad faith.
6.2 The Policy paragraph 6(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 6(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration or use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 6(b) and 6(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 6(a)(ii) and (iii) of the Policy.
6.5 The Complainant has demonstrated that it has rights in the BASKIN ROBBINS trademarks, which are registered internationally (including in the United States of America since 1961 and in the UAE since 2003) and are well-known in relation to its ice cream products.
6.6. The disputed domain name <baskin-robbins.ae> is identical to the Complainant's US registered trademark number 1,185,045 (registered in 1982).
6.7 The absence of a hyphen in the disputed domain name <baskinrobbins.ae> can be ignored for the purposes of the Policy and, accordingly, is also identical to the said US trademark registration.
6.8 In the circumstances, the Complaint satisfies the requirements of paragraph 6(a)(i) of the Policy.
6.9 It is plain from the circumstances set out in paragraphs 4 and 5 above that the Respondent cannot demonstrate any of the circumstances of paragraph 6(c) of the Policy. Nor, in the absence of a Response, is there any indication that the Respondent could show rights or legitimate interests in either of the disputed domain names on any other basis.
6.10 Again, the facts and matters set out in the preceding paragraphs – which do not require repetition here – plainly establish that both of the disputed domain names were registered and are being used in bad faith. In the inter partes email correspondence the Respondent has made no effort to dispute the Complainant's rights to the BASKIN ROBBINS trademarks, nor to the Complainant's entitlement to the transfer of the disputed domain names. Furthermore, his counteroffer to sell those domain names to the Complainant – Respondent's emails of November 15, 2008 and August 19, 2009 – coupled with his offer to sell them on the “www.bazaar.ae” and “www.uaeinsider.com” websites is further evidence of bad faith.
6.11 Consequently, the Complaint meets the requirements of paragraph 6(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <baskin-robbins.ae> and <baskinrobbins.ae> be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: September 25, 2009