Complainant is Dnata, United Arab Emirates, represented by DLA Piper UK LLP, United Kingdom.
Respondent is Juan Whitby, Sparc Technology DMCC, United Kingdom.
The disputed domain <dnata.media> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 5, 2020.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 28, 2020. On September 4, 2020, the Center received an email communication from Respondent offering to transfer the disputed domain name.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 4, 2020. 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.
Complainant, a member of the Emirates Group, is an international travel and airport services provider. Complainant operates globally under the DNATA mark, currently in 35 countries, with a total of over 46,000 employees. Complainant owns several registrations for its DNATA mark, including in the United Kingdom, where Respondent lists its address of record. These include United Kingdom Registration No. 3099810 (registered on March 18, 2015); United States of America Registration No. 5330034 (registered on November 7, 2017); and United Arab Emirates Registration No. 164849 (registered on February 23, 2012) (in Arabic).
Complainant also owns numerous domain name registrations. These include, among others, <dnata.co.uk> (registered on May 26, 2010) and <dnata.co> (registered on June 6, 1995). Complainant uses the URLs associated with these domain names to inform prospective consumers and clients about products and services offered under its DNATA mark.
The disputed domain name <dnata.media> was registered on April 23, 2020.
The disputed domain name resolves to a log-in page with the text “Welcome to MediaPad mp-03 site. Authorised Personel only”.
Complainant contends that (i) the disputed domain name, is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the DNATA mark, which it uses globally. Complainant contends that Respondent has incorporated its well-known mark in full into the disputed domain name. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain. Complainant further alleges that Respondent has engaged in a pattern of conduct that establishes bad faith under the UDRP.
Respondent did not reply to Complainant’s contentions.
After the due date for filing a response had passed, and on the same day that the Parties were notified that a Panel had been appointed, the Center received a message by electronic mail from Respondent. The message did not include any substantive assertions or defenses, but rather stated that, “[w]e have now received confirmation that we can authorize the transfer”. The message also included a “Standard Settlement Form”, which was signed by Respondent, but which did not contain a signature from Complainant.
There is no provision in the Rules for filing supplementary papers except in response to notifications of deficiency by the Center. Respondent’s filing was past the due date.
Exercising its discretion, the Panel has decided to accept and consider Respondent’s submission, as the submission is non-substantive and does not change the outcome of the dispute. See paragraphs 10 and 12 of the Rules; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Panel finds that it is. The disputed domain name incorporates in full Complainant’s DNATA mark. Typically a Top-Level Domain name may be ignored for purposes of considering this first element. See Compagnie Générale des Etablissements Michelin v. Whois Guard Inc., Whois Guard Protected/Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234. See also Calvin Klein, Inc., Calvin Klein Trademark Trust v. Whois Guard Protected, Whois Guard, Inc./StayU Kasabov, WIPO Case No. D2015-2306.
The Panel therefore finds that the disputed domain name is identical to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted. Respondent has not contested the assertions by Complainant, but rather appears to have agreed to a transfer.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. In this case, Complainant has submitted evidence that Respondent, or its affiliated organization, has engaged in a pattern of registering domain names that incorporate various distinctive marks for other providers of travel-related services, similarly incorporating variants of their marks and adding the Top-Level Domain, “.media”. These registrations include <ihg.media> (IHG hotel group); <cpkensington.media> (Crowne Plaza Kensington); <threadneedles.media> (Threadneedles Hotel, London); and <calcot.media> (Calcot and spa). This evidences bad faith in accordance with paragraph 4(b)(ii) of the UDRP.
Given the extensive use by Complainant of its DNATA mark for travel-related services, the Panel finds sufficient evidence that Respondent was aware of Complainant’s rights when he registered the disputed domain name. For purposes of satisfying this requirement under the UDRP, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
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 <dnata.media> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Date: September 17, 2020