Saudi Tourism Authority v Romio

WIPO Case No. D2024-1304

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Saudi Tourism Authority v. Romio

Case No. D2024-1304

1. The Parties

The Complainant is Saudi Tourism Authority, Saudi Arabia, represented by Kadasa Intellectual Property,

Saudi Arabia.

The Respondent is Romio, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <sta-sa.online> is registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2024. On March 27, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On March 28, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Protected under Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on April 3, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on April 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on April 26, 2024.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on May 16, 2024. The Panel f inds 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

page 2

4. Factual Background

The Complainant is a government entity founded in 2020 to support the growth of the tourism sector in Saudi Arabia. The Complainant owns many trademark registrations for SAUDI TOURISM AUTHORITY such as the registrations listed below. The Complainant refers to itself through the abbreviation “STA” which it uses on its of f icial website < sta.gov.sa>.

1)        Saudi Trademark Registration No. 1442013536, registered on 10.07.1442 in the Hijri/Islamic calendar (the equivalent date in the Gregorian calendar is February 22, 2021)

2)        Saudi Trademark Registration No. 1442013538, registered on 10.07.1442 in the Hijri/Islamic calendar (the equivalent date in the Gregorian calendar is February 22, 2021)

The disputed domain name was registered on January 19, 2024, and is used for sending an email with a fake job offer impersonating Complainant’s Human resources. The disputed domain name itself does not resolve to an active website.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has been using the abbreviation “STA” in its domain name. The Complainant is also often referred to by the abbreviation “STA” in publications by the Complainant or others. The disputed domain name incorporates the Complainant’s used trademark “STA”. The Respondent has been sending phishing emails from the disputed domain name in an attempt to impersonate the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is no bona fide or legitimate noncommercial or fair use of the disputed domain name as it is used for fraudulent activity. The Respondent is sending fraudulent emails in order to collect individual data and is creating confusion in the minds of Internet users. The Respondent could not have been known by the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent is sending fraudulent emails pretending to be the Complainant. The disputed domain name was registered in 2024 while the Complainant’s use of “STA” dates back to 2020. The Respondent

registered the disputed domain name in order to create confusion with the Complainant’s trademark by impersonating the Complainant in order to collect individual data and in an attempt to attract Internet users. The Respondent must have had knowledge of the Complainant’s use of the abbreviation “STA.” The

Respondent’s emails show the Complainant’s registered trademark “Saudi Tourism Authority.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

page 3

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The letters STA, used in the disputed domain name, constitute an abbreviation of the Complainant’s trademark. Panels have found that the first element requirement is met through the use of an abbreviation being considered that the trademark is recognizable within the disputed domain name. Factor Systems, Inc. v. Susan Gould, WIPO Case No. D2023-1812. This is particularly the case here as STA is regularly used to refer to the Complainant, e.g., the Complainant’s domain name for its of f icial website, the various social media posts submitted by the Complainant. In addition, in specif ic limited instances, where a panel would benef it f rom af f irmation as to confusing similarity, the broader case context may be considered. WIPO Overview 3.0, section 1.7. As detailed below, the disputed domain name has been used to deliver email communications attempting to impersonate the Complainant, and the disputed domain name was clearly chosen by the Respondent to take advantage of the intended confusing similarity with the Complainant’s trademark. Airports Company South Africa SOC Limited v. Domains By Proxy, LLC / Dill Martine, WIPO Case No. D2020-2716.

Although the addition of other terms here, “sa” may bear on assessment of the second and third elements, the Panel f inds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult task of “proving a negative”, requiring information that is of ten 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The disputed domain name is used in connection with an email address from which a fake job offer has been sent. This ref lects an intention to impersonate the Complainant with the aim of phishing.

page 4

Panels have held that the use of a domain name for illegal activity here, claimed phishing and
impersonation/passing of f , can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent is using the disputed domain name in connection with an email address that is part of a fraudulent scheme. The Panel notes that a fake job offer is sent using the email address and that it replicates the logo and the name of the Complainant, and of fers a position at the Complainant.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegal activity here, claimed, phishing and impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel f inds that the Complainant has established the third element 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 <sta-sa.online> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: May 30, 2024