WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

El Baik Food Systems Company SA v. Egyptianit Eit

Case No. D2007-1421

1. The Parties

The Complainant is El Baik Food Systems Company SA, of Luxembourg, represented by Abu-Ghazaleh Legal Office of Jordan.

The Respondent is Egyptianit Eit, of Cairo, Egypt.

2. The Domain Name and Registrar

The disputed domain name <broast-albaik.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2007. On September 26, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On September 26, 2007, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 15, 2007. The Center verified that the Complaint together with the amendment to 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. No formal Response was filed with the Center. However, the Respondent sent emails to the Center on October 9, 12, 19 and 25, which were respectively acknowledged by the Center.

On October 31, 2007, the Complainant requested that the proceedings be suspended, to seek an amicable transfer of the disputed domain name. In the event, the Complainant did not formalize that request by a signed communication. In a further email to the Center on November 13, 2007, the Complainant enclosed a copy of a communication it had received from the Respondent. That communication stated, among other things, that the Respondent was waiting to hear from the Complainant “in order to take the steps to settle this matter once and for all and with the other party of that dispute too who is asking us to compensate him for the loss of the domain as the result of our prospective mutual agreement”. The Complainant stated that the Respondent had then orally sought an amount of any fees refunded to the Complainant and, since the Complainant believed this request to demonstrate a lack of good faith, requested a continuation of these proceedings. The Respondent made a further communication to the Center on November 18, 2007 which mentioned that “we did answer him [the Complainant] but he intentionally didn’t respond” and claimed that the proper Respondent was instead “ALBAIK”.

The Center appointed James A. Barker, Mohamed-Hassam Loutfi and Colin Yee Cheng Ong as panelists in this matter on December 11, 2007. The Panel finds that it was properly constituted. Each member of 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 language of the proceeding is English, being the language of the Domain Name Registration and Service Agreement, pursuant to the paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.

The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above (under the section on procedural history), the Panel concludes that the Center has properly notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel has reviewed the parties submissions and, in the light of this material, the Panel finds as set out below.

4. Factual Background

The Respondent did not file a Response to the substantive assertions in the Complaint. The following facts, drawn from the Complaint, the case file, and the Panel’s own direct knowledge, are therefore not in dispute.

The Complainant operates a chain of fast food outlets in Saudi Arabia, that primarily sells ‘broasted’ chicken and shrimp. The Complainant explains that the term ‘broast’ is commonly used in Middle Eastern countries to refer to roasted chicken breast. The Complainant’s business was founded in 1986 in Jeddah, Saudi Arabia.

The Complainant owns registered trademarks for the mark ALBAIK, rendered alternatively in roman script and in Arabic, as well as an associated device mark which depicts a drawing of a chicken in a bow tie and a hat. Those marks are registered in various Arab countries (although not apparently in Egypt where the Respondent resides) and in non-Arab countries.

The Complainant provided evidence that the top 9 results in a Google search for ‘al baik saudi arabia’ all apparently relate to the Complainant and its business.

The disputed domain name was registered on May 7, 2003.

At the date of this decision the disputed domain name reverted to an active website relating to the “Al-Baik Fast Food Industrial Processing Co”., and provides information apparently about the business conducted by that entity. The Complainant also provided a copy of a similar undated webpage. From that evidence, it appears that the Respondent’s website relates to entirely the same business as that of the Complainant, and also features the same device mark as the Complainant’s. Among other things, the website states that Al-Baik Fast Food Industrial Processing Co. is an Egyptian company, established in 2001 in Cairo, Egypt with Arab and Egyptian investors.

5. Parties’ Contentions

A. Complainant

The following is summarized from the Complaint.

The disputed domain name is confusingly similar to the Complainant’s registered mark, and that the addition of the term ‘broast’ does not lessen that confusion. The Complainant’s mark is well-known in the Middle East and, as such, the Respondent can not have been unaware of it. The term ‘broast’ is also a registered trademark (although the Complainant does not provide direct evidence of this).

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not used it in connection with a bona fide offering of goods or services. The disputed domain name has been used to promote the same services offered by the Complainant, without any authorization from the Complainant. The website to which the disputed domain name reverts is used for a commercial purpose. The Respondent is using the disputed domain name to mislead consumers and tarnish the Complainant’s mark. The Respondent is also using the Complainant’s mark to promote its own services. The Respondent is not a distributor of the Complainant’s and has no trademark for “Albaik”.

The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered after the Complainant registered its trademarks. (The Complainant does not provide direct evidence of the date of the registration of its marks). The Complainant’s marks are well-known and the Respondent must have been aware of them when it registered the disputed domain name. The Respondent has intentionally infringed the Complainant’s trademark to attract visitors to its own website for commercial gain.

The Respondent did not respond to a cease and desist letter sent by the Complainant. (The Complainant does not provide direct evidence of such a letter.) Neither has the Respondent stopped using the disputed domain name. This may be another indication of bad faith.

B. Respondent

The Respondent did not file a formal Response to the allegations in the Complaint.

The Respondent (‘Egyptian IT’) did, however, make various email communications with the Center between October 9 and 22, 2007, and also on November 18, 2007. Essentially, the Respondent claims not to be the Respondent in fact, and rather that the right party to be involved as the Respondent is ‘ALBAIK’ – which the Panel has taken to be a reference to the ‘Al-Baik Fast Food Industrial Processing Co.’ referred to on the website to which the disputed domain name reverts. The Respondent claims only to be the technical contact for that business with it otherwise has “nothing to do” with.

The Respondent made a further communication (received by the Center on December 13, 2007) in which it says that it is “amazed” that the Center still addresses it as the Respondent, despite its emails to the Center denying that it is the Respondent in fact, who it claims is “ALBAIK of Egypt”. The Respondent also claimed that the Complainant is engaged in a legal dispute in Egypt with “ALBAIK of Egypt” which the Complainant deliberately did not mention “in order to bring us in abad (sic) faith and illegal dispute”. The Respondent claims that, as such, the Complainant has breached the Policy.

6. Discussion and Findings

To have the disputed domain name transferred to it, paragraph 4(a) of the Policy provides that the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant has asserted each of these elements of paragraph 4(a) in its Complaint (as summarized above). Whether the Complainant has proved each of them is discussed as follows, immediately following the discussion of certain procedural issues.

A. Procedural issues

Three procedural issues arise in this case.

One is that the Respondent has, in various communications to the Center, contended that it is not a proper party to this dispute. Rather, the Respondent contends that it is only the technical contact for the disputed domain name, while the real party behind it is ‘Al-Baik Fast Food Industrial Processing Co.’

However, the Panel finds that the named Respondent is the proper Respondent in this case (listed as ‘Egyptianit Eit’ in the registrant details for the disputed domain name, and ‘Egyptian IT’ in its own communications to the Center). Importantly in this respect, paragraph 1 of the Rules defines the “Respondent” to mean “the holder of a domain name registration against which a complaint is initiated”. The Respondent in this case meets that definition. It is the holder of the domain name registration and has had the Complaint initiated against it. As the holder of the domain name, the Respondent ultimately controls it and cannot, therefore, deny responsibility entirely for it.

Even if, as it contends, the Respondent holds the registration for the benefit of the ‘Al-Baik Fast Food Industrial Processing Co.’, there must be some arrangement between them for this purpose. Such an arrangement would mean that, in relation to the disputed domain name, both the Respondent and the ‘Al-Baik Fast Food Industrial Processing Co.’ have engaged (even if with respectively different roles) in a common purpose - namely the use of the disputed domain name in connection with a ‘fast food’ related website. As such, the Panel has treated the actions and knowledge of the Respondent as synonymous with the actions and knowledge of the party on whose behalf it purports to act. Accordingly, references hereafter to ‘the Respondent’ are references to both the named Respondent, as well as the party for which it says it acts.

For completeness however, the Panel notes that the case file contains no communications from the ‘Al-Baik Fast Food Industrial Processing Co.’ in connection with this case. Communications in the case file also appear to contradict the Respondent’s apparent suggestion that it is merely a technical contact for the disputed domain name. In particular, the Complainant provided a copy of a communication to it from the Respondent’s legal representative. In that correspondence, the Respondent’s legal representative suggested that he was waiting to hear from the Complainant “in order to take the steps to settle this matter once and for all”. That is, this correspondence indicates that the Respondent treated itself as having the authority to settle this dispute. If so, this suggests to the Panel that the Respondent was more than merely a passive holder of the domain name registration for a third party. However, it is not necessary for the Panel to make a determinative finding in this respect for the reasons set out above.

A second procedural issue that arises is that the Respondent sent a communication to the Center on December 13, 2007, after the appointment of the Panel and after the due date for the Response. Neither the Policy nor the Rules explicitly provide for submissions or other communications to be submitted by either party after its due date. To ensure fairness to the Respondent in the circumstances of this case, the Panel decided to admit and consider that further communication, in accordance with paragraph 10 of the Rules.

Thirdly, the Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant, but has not done so. Some previous WIPO panels have suggested that if the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent. This Panel considers that any such adverse inference is not conclusive in itself. The Complainant is still obliged to prove its case in accordance with the Rules. Despite the Respondent’s failure to submit a formal Response, the Complainant must nevertheless prove the three elements that are required by the Policy, relying on the Complainant’s own ability to explain them. (See for example, The Winetasting Network v. 1-800wineshop, WIPO Case No. D2005-0731.)

This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.

Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

B. Identical or Confusingly Similar

The Complainant must first demonstrate under paragraph 4(a)(i) of the Policy that it ‘has rights’ in a mark. The Complainant has demonstrated that it has a registered mark for ALBAIK in a number of jurisdictions. The Complainant contends that the disputed domain name is confusingly similar to its registered ALBAIK mark.

It is well established that the “.com” extension, being a necessary functional part of the domain name, does not affect the question of whether a domain name is identical or confusingly similar to the mark. (See for example, CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.) Ignoring that extension therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, for the following reasons.

Firstly, the disputed domain name entirely incorporates the Complainant’s ALBAIK mark. A number of previous panel decisions have found that the entire incorporation of a registered mark in a domain name may support a finding of confusing similarity. (See for example AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758).

Secondly, the inclusion of the term ‘broasted’ accentuates the risk of confusion with the Complainant’s mark. The Complainant argued, without any demurrer from the Respondent, that the term ‘broasted’ is commonly used in the Middle East to refer to roast chicken breast – which is a product particularly marketed by the Complainant. Previous Panels have found that the inclusion of such words, which are associated with a complainant’s trademark, do not distinguish the mark but rather support a finding of confusing similarity. (See, for example, Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920; Arthur Guinness Son & Co. (Dublin) Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020.)

Thirdly, where the association between the domain name and the trademark would cause the end user to believe wrongly that the respective services came from the same or economically linked undertakings, there would be a likelihood of confusion. (See Ellerman Investments Ltd. and another v. C-Vanci [2006] EWHC 1442 and see PRL USA Holdings, Inc. v. Yan Shif WIPO Case No. D2006-0700.) The Panel considers that there is such an association in this case.

Fourthly, additionally, the Complainant argues (although does not provide significant evidence) that is mark is well-known in Middle Eastern countries. Regardless, it appears reasonable to infer that the Complainant’s mark is well-known in the areas where the Complainant does business. As such, the disputed domain name is likely to create confusion with the Complainant’s mark, at least in the minds of those Internet users who recognize the Complainant’s mark.

For these reasons, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative elements which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. However the Respondent in this case has not provided evidence of any such circumstances, nor any other circumstances.

The Complainant has made out a prima facie case against the Respondent that none of the three elements establishing legitimate interests or rights mentioned in paragraph 4(a)(ii) of the Policy applies. In these circumstances, it is up to the Respondent to come forward and make a case to the contrary if it is to succeed on this ground. (See item 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.) While the Respondent sent a number of procedural communications to the Center, it has not made any substantive response to the allegations against it. It has been clearly set out in previous Panel decisions that, in such an instance, the burden of proof shifts on to the Respondent to rebut the evidence presented by the Complainant. (See for example, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and Oxygen Media Corporation v. Spiral Matrix, WIPO Case No. D2006-0521).

There is otherwise no evidence in this case that the Respondent has a right or legitimate interest in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name; made demonstrable preparations to use the disputed domain name before notice of this dispute; or is making a legitimate noncommercial or fair use.

Rather, the evidence indicates that the Respondent (either on its own, or in concert with the third party) registered the domain name to use it in connection with a website that sells products that compete with the Complainant’s, and is otherwise a website that would appears to copy the Complainant’s device mark (the chicken with the hat and bow tie) with little variation. As there is only the Complainant’s evidence on this point, the Panel has inferred that the Complainant’s rights pre-date the Respondent’s use of the similar mark.

For these reasons, the Panel considers that the Respondent did not register the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy Paragraph 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Paragraph 4(c)(iii) of the Policy. (See PRL USA Holdings, Inc. v. Lucas Cobb, WIPO Case No. D2006-0162 and Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808.)

For these reasons, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Under the Policy, a finding of bad faith can be made where the Respondent “knew or should have known” of the Complainant’s trademark rights, but nevertheless registered and used a domain name incorporating that mark. (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.)

There is little doubt in this case that the Respondent knew of the Complainant’s mark.

As set out above in relation to paragraph 4(a)(i) of the Policy, the disputed domain name incorporates the Complainant’s mark entirely and adds the term ‘broasted’ which relates to the trademark value of the Complainant’s mark. The closeness in the similarity of the device mark appearing on the Respondent’s website and the Complainant’s own device mark also strongly suggests that the Respondent was aware of the Complainant and its marks, and has sought to exploit the value in those marks.

Further, paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.

Based on the evidence before it, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy. Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use (see Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).

For these reasons, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <broast-albaik.com>, be transferred to the Complainant.

Dated: January 4, 2008