Domain protection in the UAE

“Arguing that you don’t care about the right to privacy because you have nothing to hide is no different than saying you don’t care about free speech because you have nothing to say.”

                                                                                                                                                                                    –     Edward Snowden. 

In a world where internet dependency continues to rise, access to information has become effortless compared to two decades ago. Nowadays, corporate entities, governmental authorities, organizations, and individuals rely on websites to access information online. These websites are domain names, such as www.fotislaw.com, for example. With the rise of E-Commerce worldwide, there has been a significant change in marketing dynamic, and the most effective methods in reaching potential clients and customers is through a well-developed website.  To simplify, domain names are important due to the fact that the internet’s addressing scheme will not be effective without them. Every computer has an Internet Protocol (IP) address, a unique string of numbers that shows the geographical area that an internet address belongs to. However, since the string of numbers is almost impossible to achieve, a Domain Name System is used to assign a unique name to each IP address. Hence, registering a unique and memorable domain name is one of the first steps in protecting it. Domain privacy, also known as WHois privacy, is a service offered by domain name registrars and ensures privacy when a user purchases from the registrar. Because the E-Commerce industry is growing rapidly in the Middle East, disputes over domain names have become increasingly popular in the UAE; hence .ae Domain Administration (USDA) was established as the regulatory body and Registry Operator in the UAE for the .ae domain. It was established by the Telecommunications Regulatory Authority (TRA) and is responsible for regulating and enforcing the policies in relation to the .ae domain.

 

The UAE Domain Name Disputes Policy

The .aeDA policy has been adopted from the Internet Corporation for Assigned Names and Numbers (ICANN), which mirrors the Uniform Dispute Resolution Policy (UDRP). Under the policy mentioned above, disputes related to domain name entitlement are settled through court, and the court shall determine who is entitled to the domain name. The UDRP policy is a straightforward process when dealing with domain name disputes. Complaints are filed under the WIPO Arbitration and Mediation Center. The plaintiff, who is the trademark owner, is obliged to provide proof of ownership of the trademark, while the Respondent who registered the domain name is required to state a justifiable reason for using the domain name. There can be two remedies to solve this dispute and it can either be 

(a) transferring the domain name from the Respondent to the plaintiff or 

(b) The Complainant’s cancellation of the domain name, which will lead to him not having any interest in the domain name. 

However, when this is done, the domain name becomes free and available to anyone who wishes to register the domain name, so it must be monitored when canceled. 

To be successful in a domain name claim under the UDRP, these are the steps a complainant must prove:

1. The disputed domain name that was registered by the Respondent is identical to the trademark or service mark to which the plaintiff has the rights to
2. The Respondent possesses no rights or any legitimate interest in the disputed domain name.
3. When the disputed domain name has been registered, it has been operating in bad faith.

 

Although the .aeDA’s dispute resolution policy has no requirement for the plaintiff’s trademark to be registered, the proof of registration in the UAE would be a legitimate confirmation that the plaintiffs possess ownership of the trademark. Usually, a domain name operating on bad faith is the easiest element to satisfy and is usually demonstrated by using the domain. Cybersquatting is a fairly common practice. It occurs when an individual or a company with no legitimate interest in the domain name uses the trademark that has not been registered to a domain intentionally to gain monetary value from the owner of the trademarks that wish to register the domain name. 

 

Case Study:

The case of Nakheel PJSC v Aqeel Ahmed, case number DAE2019-0004 is a prime example of acquiring a domain name and operating in bad faith. The disputed domain name nadalshebamall.ae is registered with .aeDA, and the case was filed with the WIPO Arbitration and Mediation Center. 

 

Facts of the case:

Nakheel PJSC (Complainant) is a leading property development company registered in Dubai and manages and leases residential, commercial, retail, and leisure projects. The Complainant acquired a retail project named “Nad Al Sheba Mall,” and to support this development, the Complainant possesses an array of registered trademarks concerning the word mark NAD AL SHEBA MALL.  After the Complainant announced their AED 825 million contract award for the construction of the mall, they received an email from Aqeel Ahmed (Respondent) a month later stating that he is in ownership of the Nad Al Sheba Mall domain name and would like to sell it to the Complainant for the price of USD 49 million.

 

Findings of the Court: 

As noted above, Section 6(a) of the policy notes that the Complainant must prove the three elements to succeed with a proceeding. 

 

1. Identical and confusingly similar

The first point of the policy is satisfied by the Panel and affirms that the Complainant possesses the rights in its registered NAD AL SHEBA MALL mark., and is further noted by the Panel that the marks both contain a word and a graphical element. The approach usually taken by the Panels regarding word and graphic elements under the UDRP is mentioned in Section 1.10 of the WIPO Overview 3.0. The Panel concludes that the word element prima facie satisfies the requirement under the policy and, therefore, satisfies Section 6 (a)(i). 

 

2. Rights or legitimate interest 

Section 6(c) of the policy states that the Respondent may demonstrate rights or legitimate interest in the domain name which is disputed, however, the Respondent does not hold any legitimate interest in the domain name, and the Panel has found that the Complainant has established the required Prima Facie case. and under Section 6 (a)(ii), the Panel has affirmed that the Respondent has no rights or legal interest in the domain name which is disputed. 

 

3. Registered or is being used in bad faith

Complainant’s submission satisfies Section 6 (b)(i). It proves that the Respondent merely registered the disputed domain name in order to sell it to the Complainant, thus operating in bad faith. Section 6(b) of the policy has provided four circumstances that are proved to provide evidence for bad faith should the Panel find it to be present:

• If there is a circumstance that indicates you have registered or acquired the Domain Name solely for renting, selling or transferring the Domain Name Registration to the claimant who owns the trademark or service mark to gain monetary value;
• If you have registered the domain name mainly to disrupt the business of the competitor;
• If you intentionally attract users to the web page by using the domain name due to the similarity of the domain name, which confuses the Complainant’s mark, and if you receive any sponsorship, affiliation or endorsement due to the web page.

 

Judgment: 

Due to the reasons as mentioned above, the Panel has found that the disputed domain name nadalshebamall.ae shall be transferred back to the Complainant according to section 6(i) of the policy paragraph 15 of the rules.