|Kläger||Olayan Investment Company|
|Beklagter||Unknown, Global Domain Privacy Service, Unknown, Global Domain Privacy Service/Christine Cochrum/Richard Arteaga|
The Complainant is Olayan Investments Company of Furstentum, Liechtenstein, represented by Shearman & Sterling LLP, United Kingdom of Great Britain and Northern Ireland.
The two Respondents are Richard Arteaga of Oceanside, United States of America and Christine Cochrum of Baltimore, United States of America.
The disputed domain names <khaled--olayan.com> and <0layangroup.com> are registered with Register.it S.p.A.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2011. On August 5, 2011, the Center transmitted by email to Register.it S.p.A a request for registrar verification in connection with the disputed domain names. On August 11, 2011, Register.it S.p.A transmitted by email to the Center its verification response disclosing two registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2011 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 16, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2011.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 29, 2011. 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.
The Following facts and circumstances are taken from the uncontested statements in the Complaint.
The Complainant is the parent company of the Olayan Group of companies, a Saudi Arabian-based multinational enterprise comprising approximately 50 companies and affiliated entities worldwide, which are engaged in a range of distribution, manufacturing, services and investment activities.
The Complainant is the owner of several trademark registrations for OLAYAN, including:
United Kingdom Trademark registration No. 2402456 for OLAYAN (word mark), filed on September 26, 2005 in classes 35 and 39;
United Kingdom Trademark registration No. 2402431 for OLAYAN (figurative mark), filed on September 26, 2005 in classes 35 and 39;
Community Trademark registration No. 4653151 for OLAYAN (word mark), filed on September 26, 2005 in classes 35 and 39;
Community Trademark registration No. 8208423 for OLAYAN (word mark), filed on April 8, 2009 in class 36;
Community Trademark registration No. 4659215 for OLAYAN (figurative mark), filed on September 26, 2005 in class 35;
Community Trademark registration No. 8208456 for OLAYAN (figurative mark), filed on April 8, 2009 in classes 36 and 39.
The Complainant is also the owner of the domain name <olayan.com>, registered on March 6, 1996.
The disputed domain name <khaled--olayan.com> was registered on June 15, 2011 and the disputed domain name <0layangroup.com> was registered on June 30, 2011.
None of the disputed domain names are redirected to active websites.
The Complainant affirms that, while the Respondents are apparently two different individuals, it is clear that the two disputed domain names are being used by one person or several persons acting together, for the same fraudulent purposes.
The Complainant states that he is the registered proprietor of a large portfolio of trademarks registrations of the name OLAYAN and that the disputed domain names are confusingly similar with these trademarks in which he has rights and continues to have rights.
The Complainant contends that the two disputed domain names contain in each case the Complainant’s name (OLAYAN).
The Complainant points out that the use of the number zero instead of the letter “o” at the beginning of <0layangroup.com> is an imperceptible difference and has been done in a deliberate attempt by the Second Respondent to misrepresent himself as a representative of the Complainant’s group, which he is not. The Complainant also points out that its employees have email addresses using the following protocol D.Lincoln@olayangroup.com which is similar, at the first glance, to the <0layangroup.com> domain name.
The Complainant states that the name “Khaled Olayan”, which is used by the First Respondent, is in fact the name of the genuine Chairman of the Complainant and that its use is again a deliberate attempt by the First Respondent to misrepresent himself as a representative of the Complainant’s group, which he is not.
The Complainant states that the Respondents registered the disputed domain names <khaled--olayan.com> and <0layangroup.com> without the permission of the Complainant and do not have a legitimate interest or right in the disputed domain names.
The Complainant points out that he is not aware, having made due enquiry, of either of the Respondents having been commonly known by the relevant disputed domain name in question or using a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant also indicates that he has no knowledge of either of the Respondents making a legitimate noncommercial or fair use of the domain names in this case and that he has not authorized their use or registration by either of the Respondents.
The Complainant considers that the Respondents have registered and are using the disputed domain names in bad faith.
The Complainant points out that since June 2011 it has come to its attention that various persons have been using email addresses incorporating the disputed domain names to send emails representing themselves as officers, or employees, of the Complainant’s Group.
The Complainant attached examples of these emails as Annex 6 of its Complaint.
The Complainant then considers that the disputed domain names have been used as part of a concerted attempt to deceive for commercial gain Internet users into paying sums of money to the dishonest persons who use these domains as part of their email addresses, in order to mislead such Internet users into believing that they were dealing with the Complainant or other members or the Complainant’s Group.
The Respondent did not reply to the Complainant’s contentions.
Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents
The Panel finds appropriate to proceed, based on the relevant UDRP panel decisions, to the consolidation of multiple domain name disputes based on paragraph 3(c) or 10(e) of the Rules. As stated in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, “even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve”, a consolidation may be deemed appropriate.
In fact, “… indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, …” (see supra Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons).
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith.
The Panel observes that the Complainant has provided evidence of ownership of several trademark registrations comprising the word OLAYAN.
Regarding the first disputed domain name <khaled--olayan.com>, the Panel finds that the addition of the first name Khaled and of two dashes before the word OLAYAN is not sufficient to exclude the confusingly similarity.
It is a well established principle that the addition of descriptive or non-distinctive terms to a complainant’s trademark in a domain name does not dispel confusion (See TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361 and Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434)
The Panel believes that this principle can also apply when the term added to the trademark is a usual first name.
The Panel then founds that the trademark OLAYAN is still the dominant component of the first disputed domain name, <khaled--olayan.com>, despite the addition of the first name Khaled.
Moreover, the Complainant pointed out that Khaled Olayan is in fact the real name of its genuine Chairman. The Panel believes that this circumstance can increase the risk of confusion in the public mind.
Regarding the second disputed domain name <0layangroup.com>, the Panel finds that the substitution of the letter “o” by the number zero and the addition of the term “group” are not sufficient to exclude the confusingly similarity.
As previously stated the addition of the descriptive term “group” is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
In Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588, the Panel stated that “the domain name GAMEB0Y.com, spelled with the number zero in place of the letter “o”, is confusingly similar to the GAME BOY® trademark”.
The Panel considers that the use of the number zero in place of the letter “o” is an obvious attempt to “typosquat” the Complainant’s trademark and is insufficient to avoid confusion.
In view of the above, the Panel considers that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights and continues to have rights.
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the respondent’s rights or legitimate interests in the domain name. These circumstances are:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
In line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names in order to shift the burden of production on the Respondents (see Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the absence of a response, the Panel accepts as true the Complainant's allegations that the Respondents have no authorization to use the OLAYAN trademark in the disputed domain names and that the Respondents are not commonly known by the disputed domain name. The Panel also finds that since the disputed domain names are not redirected to active websites, there is no bona fide offering of goods or services by the Respondents.
The Panel concludes that the Respondents have not rebutted the Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of their “rights or legitimate interests” in the use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Policy outlines (paragraph 4(b)) circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent have engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on respondent’s web site or location.
The Complainant has provided evidence that the disputed domain names have been incorporated in email addresses which have been used by the Respondents or other persons in control of the disputed domain names to commit fraudulent actions by impersonating the Complainant’s representatives.
As stated in Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar, WIPO Case No. D2011-0128, the Panel finds that the Respondents “probably had the Complainant’s trademark in mind at the time of the registration and that the disputed domain names were, therefore, registered by the Respondents in bad faith”.
The Panel finds, as stated in The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561, that “It goes without saying that a Domain Name which has been acquired and used for the purpose of perpetrating a fraud, has been acquired and used in bad faith.”
The Panel also considers, as stated in Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar, WIPO Case No. D2011-0128, that when the disputed domain names are identical or confusingly similar to the trademarks of companies providing financial services, the potential risks posed by scam activities must be considered as circumstances evidencing bad faith.
Therefore, based upon the Complainant having shown the necessary elements of the Policy paragraph 4(b)(iii) and 4(b)(iv), the Panel finds that the disputed domain names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
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 names <khaled--olayan.com> and <0layangroup.com> be transferred to the Complainant.
Dated: October 13, 2011