Decisión del Panel Administrativo nº D2021-3590 of WIPO Arbitration and Mediation Center, February 07, 2022 (case Saudi Arabian Mining Company (Ma’aden) v. Fundacion Privacy Services LTD)
| Resolution Date | February 07, 2022 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is Saudi Arabian Mining Company (Ma’aden), Saudi Arabia, represented by Clyde & Co., United Arab Emirates.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama, represented by ESQwire.com PC, United States of America (“United States”).
The disputed domain name [maaden.com] is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2021, 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 November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent requested an additional four days to file the Response pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on November 29, 2021. The Complainant submitted a supplemental filing on January 17, 2022. The Respondent submitted a supplemental filing on January 24, 2022.
The Center appointed Andrew D. S. Lothian, Hoda T. Barakat, and Jeffrey J. Neuman as panelists in this matter on January 24, 2022. 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 Complainant is Saudi Arabian Mining Company (Ma’aden), established by a Royal Decree in 1997 and incorporated in Saudi Arabia. The Complainant has a mandate to develop Saudi Arabia’s minerals sector and, since being floated on the Saudi Stock Exchange in 2008, has diversified from being a gold producing company into phosphate, aluminum, industrial minerals, and copper concentrate operations.
The Complainant claims unregistered trademark rights in the MA’ADEN trademark since its inception in 1997, noting that its primary domain name [maaden.com.sa] was registered on August 30, 1999 and that its website at “www.maaden.com.sa” has been active since January 2001, under reference to entries from the Internet Archive “Wayback Machine” showing 779 indexed pages between January 24, 2001 and December 13, 2021. The Complainant is also the owner of two figurative marks for the MA’ADEN logo, registered in various jurisdictions, which have the following appearance respectively:
For example, the Complainant is the owner of Australian Registered Trademark No. 1619072 for the first of these figurative marks, registered on April 24, 2014 in Classes 1, 5, 35, 37, and 40 and is the owner of Saudi Arabia Registered Trademark No. 1441030731 for the second of these figurative marks, registered on November 15, 2020 in Class 37.
The creation date of the disputed domain name is September 11, 2003. According to the Registrar’s verification, the disputed domain name was registered by the Respondent (or the Respondent acquired the registration of the disputed domain name) on July 16, 2018. The Respondent however asserts that it acquired the disputed domain name “on or around May 2011”.
According to the Complainant’s several screenshots, the website associated with the disputed domain name features advertising links for rock salt licks for animals, “Miner Companies”, two financial trading platforms, employment applications, creative graphic designs, construction contractors, and construction schedule software.
Between July 11, 2020 and January 11, 2021, in a process initiated by the Complainant’s agents, the Parties attempted to negotiate a purchase of the disputed domain name, via their respective agents, in a back-and-forth email process. The Parties could not however agree on a price. The Complainant’s identity was not disclosed to the Respondent during this process. The Complainant’s agent told the Respondent’s agent by emails of July 11, 2020, October 19, 2020, and November 16, 2020 that it wished to use the disputed domain name for a beauty website. On December 9, 2020, the Respondent’s agent stated that its asking price was USD 500,000, “Given the generic nature of the name and possible end users (i.e. businesses with similar domain names)”. This was unacceptable to the Complainant’s agent, which made a counter-offer on December 20, 2020 of USD 80,000. On December 21, 2020, the Respondent’s agent replied that the lowest acceptable figure for the disputed domain name was USD 475,000. On January 7, 2021, the Complainant’s agent countered with an offer in the sum of USD 100,000, which was met on January 11, 2021 by an offer from the Respondent’s agent of USD 400,000, at which point the correspondence appears to have ended.
Three certified translations obtained by the Respondent dated October 31, 2021, November 2, 2021 and November 3, 2021 respectively, indicate that the Arabic word “٠عاد٠” may be transliterated as “maaden” [certified translations 1 and 2], or “ma’adin” or “maaden” [certified translation 3]. The Arabic word is translated as “metal or minerals” [certified translation 1], “minerals” [certified translation2], or “minerals”, “mineral resources”, “metals”, “mines” and “half-piaster coins” [certified translation 3].
In the Complaint, the Complainant contends as follows:
The Complainant has established substantial goodwill and reputation in, and has become exclusively associated with the MA’ADEN mark worldwide. The Complainant has consistently and continuously used the MA’ADEN trademarks for more than two decades, including on its website at “www.maaden.com.sa”, on social media including “LinkedIn”, and “Twitter”, and on “YouTube”. The Complainant owns domain names incorporating the “MA’ADEN” designation, namely, [maaden.com.sa], [maaden.sa], [maaden.org], [maaden.net], [maaden.in], and [maaden.co.za]. The Complainant has received awards and accolades for products and services provided under said mark, including in 2015, 2017, and 2018 [details provided]. The Complainant’s evolution timeline from 1997 to 2010 [details provided] demonstrates the Complainant’s growth and longevity of use of said mark.
The disputed domain name is identical to the Complainant’s MA’ADEN trademarks or at least is highly similar and would cause confusion.
The Respondent has no rights or legitimate interests in the disputed domain name, which points to a website containing pay-per click (“PPC”) links to other businesses, including mining services of the Complainant’s competitors, having no connection to any entity sharing the MA’ADEN name. There is no indication that the Respondent is genuinely trading by reference to the disputed domain name. The Respondent is seeking to take unfair advantage of the reputation of the Complainant’s marks and misleadingly divert consumers to the Respondent’s website. The Complainant has found no evidence that the Respondent is commonly known by the disputed domain name or owns any trademarks consisting of “maaden”. A “Google” search result for the term “maaden” discloses results relating solely to the Complainant. The Respondent is not making a legitimate or noncommercial fair use of the disputed domain name.
It is inconceivable that the Respondent was not fully aware of the Complainant’s reputation when the disputed domain name was registered. The Complainant was incorporated in 1997 and has become well-known globally for its mining operations. The Respondent has no justification for selecting the disputed domain name.
In June 2020, the Complainant noticed that the disputed domain name was posted for bidding on “www.sedo.com”. The Complainant placed a bid of USD 500 but did not receive a response. The Complainant communicated with the Registrar and domain administrator, and was informed by the latter that the disputed domain name was available for sale by “serious domain investors” and that it should make an offer. The Complainant then offered USD 1,500 for the disputed domain name and received a counter-offer from said administrator of USD 500,000. The Complainant then indicated that the best it could offer was USD 100,00 [sic, the Panel presumes this to mean USD 100,000] but the Respondent insisted on at least USD 475,000, which is a disproportionate price. Such price is in itself evidence of use and registration in bad faith and it greatly exceeds the Respondent’s out-of-pocket costs directly associated with the disputed domain name.
The Complainant was established 11 years prior to the Respondent’s registration of the disputed domain name in 2003 and its trademark is well-known. The Respondent would have had knowledge of the Complainant due to its extensive fame and reputation when it registered the disputed domain name and its excessive asking price intentionally targets the value in the Complainant’s reputation. The Respondent is a domain name investor, has no interest...
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