WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

E-Movers LLC v. Sohail Ayub, M Ayub Transport, EEI Cargo Movers LLC

Case No. D2018-1728

1. The Parties

The Complainant is E-Movers LLC of Dubai, United Arab Emirates (“UAE”), represented by AVID Intellectual Property Registration Agent, UAE.

The Respondent is Sohail Ayub, M Ayub Transport, EEI Cargo Movers LLC of Dubai, UAE.

2. The Domain Name and Registrar

The disputed domain name <eemovers.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2018. On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2018. The Respondent submitted informal email communications but did not submit a formal response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on September 14, 2018.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 20, 2018. 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.

4. Factual Background

The Complainant has operated a moving business in the United Arab Emirates and Qatar since 2003 under the trade name and trademark E-MOVERS. The Complainant owns several registered trademarks for its E‑MOVERS mark as follows:

UAE Trademark Registration No. 200248 for E-MOVERS;

UAE Trademark Registration No. 160320 for E-MOVERS NO MESS NO STRESS (Design);

Saudi Arabia Trademark Registration No. 1435008432 for E-MOVERS;

Saudi Arabia Trademark Registration No. 1435008431 for E-MOVERS NO MESS NO STRESS (Design);

Qatar Trademark Registration No. 90631 for E-MOVERS;

Qatar Trademark Registration No. 90632 for E-MOVERS NO MESS NO STRESS (Design).

The Complainant’s registered trademark rights date back to May 24, 2011 for the E-MOVERS NO MESS NO STRESS (and Design) mark in the UAE, and October 30, 2013 for the E-MOVERS trademark in the UAE.

The disputed domain name was registered on September 23, 2017 and has resolved to a website for moving and transportation services.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name <eemovers.com> is confusingly similar to the Complainant’s registered trademark. The Complainant contends that the disputed domain name simply adds the letter “e” before the Complainant’s registered trademark.

The Complainant brings forward evidence of actual confusion in the marketplace. On June 30, 2018, a purported client posted a negative review on the Complainant’s website. Upon investigation, it was determined that the individual had actually used the Respondent’s services, believing that the Respondent and the Complainant were one and the same because of the disputed domain name <eemovers.com>.

The Complainant submits that its Registered Trademark and services are well-known in the UAE and Qatar, and that the Respondent, who is also located in that region, must have known about the Complainant when the disputed domain name was purchased. The Complainant also asserts that the Respondent originally used a logo that embedded the letter “i” in the letter “m” in EEI Movers (shown in Annex 5) that had the effect of making the name appear at first glance to be EE MOVERS. The Respondent changed the logo after he received the Complainant’s demand letter.

The Respondent is not commonly known by the disputed domain name, and was not authorized by the Complainant to use or register a domain name incorporating the Complainant’s Registered Trademark.

The Complainant contends that the Respondent is operating a website in association with a confusingly similar domain name that provides identical moving services as the Complainant, which is not a bona fide offering of goods and services.

The Complainant also submits that the Respondent has registered and used the disputed domain name in bad faith. The Respondent is using a confusingly similar domain name in association with a website which is providing identical services to the Complainant, and therefore interfering with the Complainant’s business and confusing Internet users into believing they are receiving services of the Complainant.

The Complainant notified the Respondent of its objection to the use of the disputed domain name and requested transfer of the <eemovers.com> domain name to the Complainant in April, 2018. The Respondent responded with a demand for payment of AED 20,000, which is in excess of the Respondent’s out-of-pocket expenses.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. In its informal emails, the Respondent has asked for AED 19,000 due to the costs in web development and search engine optimization.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have recognizable trademark rights in the trademarks E-MOVERS by virtue of its trademark registrations listed in paragraph 4 of this Decision. The E-MOVERS element itself is a prominent feature in all the noted registrations.

The Panel finds that the disputed domain name <eemovers.com> is confusingly similar to the Complainant’s registered trademark E-MOVERS, as the disputed domain name replicates the dominant elements of the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests in the disputed domain name.

The Complainant has owned relevant rights in the registered mark E-MOVERS since at least as early 2011. In the UAE, where the Respondent resides and carries on business, the Complainant’s moving services are known to the public under the various E-MOVERS Marks. The Respondent appears to have been aware of those rights when he acquired the disputed domain name, because he configured the logo for EEI Movers in such a way that it appeared the name was EE MOVERS. Annex 5 to the Complaint shows a captured screenshot of the Respondent’s original logo which shows the letter “i” in lower case embedded in a slightly lighter shade in the capital letter “M”. The effect caused the lower case “i” to be almost invisible. After the Respondent received the Complainant’s demand letter the Respondent changed its logo.

The Respondent has acquired and used its confusingly similar domain name in association with a website that provides moving services which are in direct competition with the Complainant’s associated business.

Once the Complainant has established a prima facie case, the burden then shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint except for an offer to sell the disputed domain name.

The Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As set out above, the Panel is prepared to find that the Respondent registered the disputed domain name <eemovers.com> with knowledge of the Complainant’s well-established registered trademark rights in E‑MOVERS. The Respondent resides in and operates his business in the UAE, where the Complainant has operated its business since 2003. The Respondent also designed a logo that embedded the lower case letter “i” in the letter “M” to effectively make the logo and name appear to be EE MOVERS, which is very similar to the Complainant’s E-MOVERS trademark. The Respondent upon receipt of the Complainant’s demand letter responded with an offer to sell the disputed domain name for AED 20,000, which is an amount much higher than the Respondent’s out-of-pocket expenses for the disputed domain name. The Respondent is using the disputed domain name in association with a website that provides moving services which are identical to those offered by the Complainant. This conduct reflects an intention to interfere with the Complainant’s business in a manner which is abusive under the Policy. The Respondent has failed to provide any evidence to explain his conduct.

The Panel is therefore prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <eemovers.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: October 9, 2018