SHUAA Capital psc v. SHUAA CAPITAL
Claim Number: FA1409001581256
Complainant is SHUAA Capital psc (“Complainant”), represented by David Bateman of K&L Gates LLP, Washington, USA. Respondent is SHUAA CAPITAL (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shuaapscae.com>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2014; the National Arbitration Forum received payment on September 23, 2014.
On September 25, 2014, ENOM, INC. confirmed by email to the National Arbitration Forum that the <shuaapscae.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shuaapscae.com. Also on September 30, 2014, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a financial services company based in Dubai with total assets of AED 1.47 billion (US$400 million). Complainant has used the SHUAA and SHUAA CAPITAL marks continuously since 2001 in connection with its services. The SHUAA mark appears prominently in Complainant’s advertising and communications, and Complainant asserts that the mark has attained widespread public recognition. Complainant owns trademark registrations for the mark in the United Arab Emirates and several other countries, and has many pending trademark applications for the mark; Complainant also claims common-law rights in the mark.
Complainant contends that the disputed domain name <shuaapscae.com>, registered by Respondent in July 2014, is confusingly similar to its SHUAA mark. Complainant notes that the domain name incorporates the SHUAA mark in its entirety, and describes “psc” and “ae” as abbreviations for public stock company and the United Arab Emirates, respectively.
Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant alleges that Respondent is using the disputed domain name to impersonate Complainant. Specifically, Complainant states that the domain name has been used in connection with multiple emails sent to third parties promising to provide loans and requesting a surety deposit, accompanied by purported loan documents bearing Complainant’s SHUAA mark and logo. Complainant asserts that Respondent provided false whois registration data for the disputed domain name, falsely listing its name as “SHUAA CAPITAL” with an address in Palo Alto, California, which is actually the location of an elementary school. Complainant states that it has not authorized or otherwise permitted Respondent to use its name or marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The disputed domain name is identical to Complainant’s registered trademark, but for the addition of the generic term “psc,” the geographic identifier “ae,” and the “.com” top-level domain. These additions do not substantially diminish the similarity with Complainant’s mark. See, e.g., Dr. lng. h.c. F. Porsche AG v. im 9uae, D2014-0967 (WIPO July 28, 2014) (finding <porscheuae.com> confusingly similar to PORSCHE); Royal Bank of Scotland Group plc v. WhoisGuard, WhoisGuard Protected / Big Biz Hosting, K Harry Usman, D2012-1735 (WIPO Oct. 16, 2012) (finding <rbsplc-uk.com> confusingly similar to RBS). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been in connection with fraudulent email messages impersonating Complainant. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages sent to third parties in an attempt to exploit such confusion, is indicative of bad faith under paragraphs 4(b)(ii) and 4(b)(iii) of the Policy. See, e.g., ADP, Inc. v. Joe Collins / iba, FA 1551312 (Nat. Arb. Forum June 18, 2014) (finding bad faith in similar circumstances). The false whois registration data furnished by Respondent lends further support to this conclusion. The Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shuaapscae.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 29, 2014
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