WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Investissement Marius Saradar S.A.L. (Holding Company) and Banque Saradar S.A.L. v. John Naffah and Z Publishing Inc
Case No. D2000-0853
1. The Parties
The Complainants are Investissement Marius Saradar S.A.L. and Banque Saradar S.A.L. both of 31 Street, Saradar Building, Rabye, Lebanon.
The Respondents are Mr. John Naffah and Z Publishing Inc both of 7325 W. Irving Park # 131, Chicago, IL 60634, United States of America.
2. The Domain Name and Registrar
The domain name at issue is:
and the Registrar is:
Network Solutions, Inc
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on July 24, 2000 (hard copy). The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is August 3, 2000.
On July 26, 2000 the Center transmitted via email to Network Solutions Inc a request for registrar verification in connection with this case and on July 31, 2000 Network Solutions, Inc. transmitted by email to the Center Network Solutionís verification response confirming that the registrant is Z Publishing Inc. and that the contact for both administrative and technical purposes is Mr. John Naffah.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 3, 2000 to:
This Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by August 22, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Mr. John Naffah
Z Publishing Inc
7325 W. Irvine Park # 131
Chicago IL 60634
United States of America
On August 10, 2000 the Respondents advised the Center that they had not received the Complaint (hard copy) since the address in the Whois database had changed and that the correct address is now:
47 W. Division #212
Chicago, IL 60610
The Center by email of August 11, 2000 agreed, in the circumstances, to extend time for filing Response to August 29, 2000. The Response was duly received on August 29, 2000 and Acknowledgement of Receipt of Response was sent by the Center on August 30, 2000.
On September 30, 2000 the Complainants filed an Additional Submission and on October 19, 2000 the Respondents filed a Response to that Additional Submission. Should either or both of these additional submissions be admitted by the Panel? The Annexes to the Response were not received by the Complainants until September 21, 2000. The Response introduced the existence of a Mr. Jim Saradar as the owner of the domain name in issue upon whose behalf that domain name was, allegedly, originally registered by the Respondents on April 2, 1996 and on whose behalf it has since then been held and maintained.
The Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case (Rules paragraph 10(b)). It would clearly be wrong to preclude the Complainants from dealing with the issues raised by the introduction of Mr. Jim Saradar into this dispute, since from the Whois database the Complainants had no means of anticipating those issues when the Complaint was framed. Further, the filing by the Complainants of the Additional Submission on September 30, 2000 has not significantly delayed this administrative proceeding. The Panel, therefore, admits the Complainantís Supplemental Submission.
As to the admissibility of the Response to the Supplemental Submission, the Panel has decided to admit the Complainantís Additional Submission. Were the Panel now to disallow the Respondents an opportunity of an additional Response, that could be regarded as failing to ensure that each Party is given a fair opportunity to present its case and thereby to treat the Parties with equality.
Further, the Rules provide that the Panel may request, in addition to the Complaint and the Response, further statements or documents from either of the Parties (Rules paragraph 12). The introduction for the first time of the existence and role of Mr. Jim Saradar in the Response could well have given rise to a request from the Panel that the Complainants respond to this potentially important new issue. Although it is not the function of Panels to deal with complex issues of fact best suited to resolution by a Court, issues addressed in the Additional Complaint and the Response thereto do not take this case outside the framework which the Policy is designed to address, the Response to the Additional Complaint has not materially delayed this administrative proceeding and in the overall context of doing justice between the Parties, the Panel admits the Response to the Additional Complaint. The relevance, materiality and weight of the evidence contained in that Response is dealt with in paragraph 6 below.
Having received by October 4, 2000 Declarations of Impartiality and Independence and Statements of Acceptance from Mr. David H Bernstein, Mr. M Scott Donahey and Mr. David Perkins, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Messrs Bernstein, Donahey and Perkins were formally appointed as Panelists. The Projected Decision Date was October 20, 2000. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue their Decision based upon the Complaint, the Response, the Complainantsí Additional Submission, the Respondentsí Response to that Additional Submission, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant
4.1.1 The Complainant, Investissement Marius Saradar, S.A.L. ("Holding Co"), is described as a holding company registered in Lebanon on April 1, 1997 as a joint stock company. Holding Co. is the registered proprietor of the SARADAR mark (see, paragraph 4.2 below).
4.1.2 The Complainant, Banque Saradar, S.A.L. ("Banque Saradar"), began trading in 1948 and became registered in Lebanon on July 31, 1956. It has operated a branch in Paris since 1986. In 1998 the International Finance Corporation (IFC), part of The World Bank, acquired 15% of Banque Saradarís equity. In April 2000 an additional 30% of Banque Saradarís equity was acquired by Banque Nationale du Canada of Quebec, Canada.
4.1.3 Both Holding Co. and Banque Saradar are part of the Saradar Group of Companies. Holding Co is owned by several members of the Saradar family, who are descendants of the late Mr. Marius Saradar, the founder of the Group.
4.2 The Complainantsí TradeMarks
Holding Co. is registered proprietor of Lebanese trademark 72,811 SARADAR and device (Classes 1 to 42) filed July 11, 1997. Holding Co. has authorised Banque Saradar and other companies in the Saradar Group to use that trademark. As stated in paragraph 4.1.2 above, Banque Saradar has been trading under and by reference to the SARADAR mark since 1948.
4.3 Banque Saradar is the registered proprietor of Lebanese trademark 81,913 "saradar.com.lb" (Class 36 for "financial and bank services and financial and baking services via the Internet network") filed December 9, 1999.
4.4 The Complaint states that the SARADAR mark has been used since Banque Saradar commenced trading in 1948. That mark is used by the Bank in connection with advertising, with marketing brochures, promoting various banking services, stationery-type portfolios, memo-pads, T-shirts and with the Bankís sponsorship of sporting events, concerts, TV programs and other cultural events. The mark is also used in relation to promotion of the Bankís services on its website at www.saradar.com.lb.
4.5 The Respondents
4.5.1 The Response is silent as to the business of Z Publishing Inc, the registrant of the domain name in issue.
4.5.2 Mr. Naffah states that, realising the important role the Internet would play, in April 1996 he recommended to his family and friends to register their last names as domain names for future use. Mr. Jim Saradar of Miami, referred to by Mr. Naffah as a friend, agreed and instructed Mr. Naffah to register the domain name in issue on his behalf.
4.5.3 Mr. Jim Saradar is said to have procrastinated and delayed development of his site. That site was still dormant when in August 1999 whilst surfing the net, Mr. Naffah read an article in an English language newspaper published in Lebanon (The Daily Star) about Mr. Mario Saradarís "financial supermarket". The relevant portions of the Response read:
"Hoping to make good use of the domain name and frustrated by the procrastination of Mr. Jim Saradar, Mr. John Naffah hastily emails Mr. Mario Saradar to see if he is interested in using the domain. The idea was to pressure Mr. Jim Saradar to either develop the website or transfer the domain to someone who will put it to good use. Price was never mentioned or discussed, the email went unanswered and no further correspondence took place between the Complainants and Respondents.
In March 2000 just before the renewal of the registration of the domain (April 2000), Mr. John Naffah informs Mr. Jim Saradar that the registration will be cancelled unless he pays the fees of the registration and commits to developing the site within one year.
Mr. Jim Saradar agrees and pays Mr. John Naffah the sum of 500 Dollars to cover the registration and handling of the Domain for five years (1996-2001)."
5. The Partiesí Contentions
A. The Complainants
The Complainants contend that the Respondents have registered as a domain name a mark which is identical to the Complainantsí SARADAR mark in which the Complainants have rights, that the Respondents have no rights or legitimate interests in respect of that domain name and that the Respondents have registered and are using that domain name in bad faith.
B. The Respondents
The Respondents deny that the Complainants have rights in the SARADAR mark. The Respondents claim that Mr. Jim Saradar has every right and legitimate interest to own a domain name reflecting his last name. The Respondents also claim that the domain name in issue was not registered in bad faith.
C. Disputed Facts
These can be summarised as follows:
5.C.1. The Complainants' rights to the SARADAR mark
5.C.1.1 The Respondentsí case is that:
As stated above, Mr. Jim Saradar is entitled to register a domain name incorporating his last name.
The Complainants have no right to the SARADAR mark because:
the Bank has no commercial presence in the United States of America;
the Bank has no online presence in France where it has been trading since 1986;
the extent of the Bankís operations does not reach beyond Lebanon and its web address saradar.com.lb reflects this;
a search over the past 10 years in the Financial Times: Business Week: New York Times: Washington Post; and the LA Times revealed no articles relating to the Complainants;
a list of the top 100 Arab Banks, ranked by assets, profits and capital makes no mention of Banque Saradar; and
Holding Coís Lebanese trademark registration for the SARADAR name was applied for in July 1997, more than a year after the domain name in issue was registered in April 1996.
5.C.1.2 The Complainantsí case is that they have rights in the SARADAR name and trademark because:
Holding Co. and Banque Saradar are the registered proprietors of the two Lebanese trademarks identified in paragraph 4.2 above;
Banque Saradar has been trading under the SARADAR name since 1948 and in France since 1986;
two of the shareholders in Banque Saradar are internationally known, namely the IFC and BNC (paragraph 4.1.2. above);
Banque Saradar is known in the banking sector in the United States and worldwide by reason of its transactions and activities with other banks; and
the lack of articles in the newspapers searched by the Respondents does not indicate a lack of rights to the SARADAR name and mark.
5.C.2 The Respondentsí Rights or Interests in respect of the domain name in issue.
5.C.2.1 The Respondentsí case is again premised on the proposition that Mr. Jim Saradar is entitled to register a domain name incorporating his last name. The Respondents also rely on their case that the Complainants have no rights to the SARADAR name or mark and that outside the Lebanon the Complainants have never been known as SARADAR.
5.C.2.2 The Complainants call into question the existence of Mr. Jim Saradar, whose identity and whereabouts they were unable to trace from several US Public Record Searches. The Respondents draw attention to the admitted deficiencies and unreliability of even the leading Public Record Search Company in the United States;
5.C.2.3 The Complainants call into question the authenticity of the communication from Mr. Jim Saradar dated August 25, 2000 confirming Mr. Naffahís authority to represent him in relation to the domain name in issue and that the domain name was registered by Mr. Naffah on his behalf in April 1996. The Complainants point to the fact that the document exhibited at H to the Response is neither witnessed nor otherwise authenticated in a generally accepted way.
5.C.2.4 The Complainants also call into question the authenticity of a document dates March 8, 2000 which reads:
"I, Jim Saradar, owner of the domain SARADAR.COM agree to hire the services of John Naffah, for the development of my website (Design and Hosting) before the first of April 2001. If I fail to do so, Mr. Naffah will be free to cancel the registration.
Sincerely, Jim Saradar"
The document bears the stamp of J Vazquez, Notary Public, State of Florida. The Respondents point to the fact that until receipt of the Response in this case, Mr. Jim Saradarís name was never mentioned. Mr. John Naffahís is the administrative and technical contact for the domain name in issue and it was Mr. Naffah who emailed the Chairman of Banque Saradar on August 30, 1999 offering to sell the domain name in issue.
5.C.3. Registration and Use in Bad Faith
5.C.3.1 The Complainantsí case is that:
Mr. Naffahís surname is a Lebanese name and he is of Lebanese-Arabic origin from Zouk Mikhail, Mount Lebanon.
As such and as a reader of the Daily Star newspaper it is extremely unlikely that he has never heard of Banque Saradar.
The Respondents seem to agree that Mr. Naffah who is said to be involved in currency trading monitors many regional publications for that purpose (Response to Additional Complaint).
Mr. Jim Saradar, if he exists, will also be of Lebanese origin and will likely know of Banque Saradar.
Using a nominee (Z Publishing Inc) in which to register the domain name in issue and not disclosing the name of the true owner, Mr. Jim Saradar, is a concealment indicative of bad faith.
The fact that no active web site has been developed since the domain name in issue was registered in April 1996 coupled with the Respondentsí offer to sell the name to Banque Saradar is indicative of both registration and use in bad faith.
The letter from Mr. Jim Saradar dated March 8, 2000 (the text of which is set out in paragraph 5.C.2.4 above) is not consistent with Mr. Naffahís offer to sell the domain name in issue to Banque Saradar in August 1999.
Further, the letter of March 8, 2000 is dated after the Complainantsí emailed the Respondents on February 16, 2000 informing them that they are not entitled to the domain name in issue by reason of the SARADAR mark owned by the Complainants. The Respondents deny that the February 16, 2000 email was ever sent.
5.C.3.2 The Respondents case is that;
because they had never heard of the Complainants until August 1999 (the Daily Star article referred to in paragraph 4.5.3. above), the domain name in issue could not have been registered some 3Ĺ years earlier (April 1996) in bad faith;
price was never mentioned in Mr. Naffahís August 1999 offer to sell the domain name to Mr. Mario Saradar and, therefore, the offer does not constitute use in bad faith;
in any event, Mr. Jim Saradar has paid Mr. Naffah 500 Dollars for registering and holding the domain name in issue (1996-2001).
5.C.4 The Reverse Hijacking Allegation
The Respondents suggest that registration by the Complainants of saradar.net and saradar.org on September 3, 1999, three days after Mr. Naffahís August 30, 1999 email to Mr. Mario Saradar, is indicative of reverse hijacking because, according to the Respondents, the Complainants have no use for and today have no website for those two domain names. In the Panelís view, those registrations by the Complainants represented no more than common prudence in the circumstances so as to prevent the Respondents or any other Third Parties appropriating them. Moreover, those domain names are not at issue in this proceeding, and the registration of other domain names cannot give rise to a finding of reverse domain name hijacking under the ICANN Policy. In any event, the Panel rejects Respondentsí request that Complainants be found to be guilty of reverse domain name hijacking.
6. Discussions and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following;
that the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
the Respondent has no rights or legitimate interests in respect of the domain name; and
the domain has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
Notwithstanding that the registered SARADAR marks were not filed until after the domain name in issue was registered and that the SARADAR registered trademarks and limited to the territory of the Lebanon, the Panel is satisfied on the evidence before it that the SARADAR name and mark has been used by the Complainants and particularly the Banque Saradar Complainant, for very many years, both in Lebanon and internationally, and that the Complainants have rights in the SARADAR mark for the purposes of paragraph 4a(i) of the Policy. Respondentsí argument that Complainantsí have no rights because they have no commercial presence in the United States is simply wrong. The Policy applies to parties who own trademark rights, regardless of whether those rights are created under the laws of countries other than the United States.
6.3 The domain name in issue is plainly identical to the SARADAR mark and the Panel finds that the Complainants, therefore, meet the requirements of paragraph 4a(i) of the Policy.
6.4 Rights or Legitimate Interests
Paragraph 4c of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based upon its evaluation of all the evidence presented shall demonstrate the Respondentsí rights or legitimate interests for the purposes of paragraph 4a(ii) of the Policy.
6.5 The issue here is whether the Respondents have produced satisfactory evidence of a right or legitimate interest in respect of the domain name in issue. The Panel considers the correct approach to addressing this is, first, to satisfy itself that the Complainants have made a prima facie showing. The burden then shifts to the Respondents, who must discharge the burden with credible evidence. Mere bald assertions will not be sufficient. In this case, the situation is somewhat unusual in that the Complainants have had the opportunity (through the Complainantsí Additional Submission) to counter the Respondentsí assertions. Information necessary to provide concrete evidence of the existence of rights and/or legitimate interests on behalf of the Respondents is uniquely within the knowledge and control of the Respondents. In taking this approach to the paragraphs 4a(ii) and 4c of the Policy, the Panel is adopting the approach followed in Do The Hustle, LLC .v. Tropic Web, Case D2000-0624.
6.6 The partiesí respective contentions have been summarised in paragraph 5 above. Prior to notice of this dispute to the Respondents; be it the Complainantsí email of February 16, 2000 the existence of which the Respondents doubt or the notifying of this Complaint to the Respondents in August 2000; there is no evidence that the Respondents and/or Mr. Jim Saradar have either used or made preparations to use the domain name in issue in connection with a bona fide offering of goods or services.
6.7 There is no evidence that Mr. Jim Saradar is making a legitimate non-commercial or fair use of the domain name in issue, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark / service mark at issue. Indeed, it appears that no use whatever has been made of the domain name by Mr. Jim Saradar or the Respondents.
6.8 The circumstances set out in paragraph 4c of the Policy are not exclusionary of other circumstances which may show rights and/or legitimate interests on behalf of the Respondents. Therefore, are there any other circumstances in the Response and the Response to the Additional Complaint which defeat the Complainantsí case under paragraph 4a(ii) of the Policy? Here the principle thrust of the Respondentsí case is that Mr Jim Saradar is no more than exercising his right to register a domain name incorporating his own surname.
6.9 In that respect, the Complainantsí have cast doubt upon the very existence of Mr. Jim Saradar and the Respondentsí case that the domain name in issue was registered on his behalf. Certainly, the offer by the Respondents to sell that domain to Banque Saradar without any mention of Mr. Jim Saradar and apparently in contradiction of his instructions to Mr Naffah (the letter of March 8, 2000 set out in paragraph 5.C.2.4 above) are somewhat inconsistent, as is the Respondentsí suggestion that the offer to sell the domain name to Banque Saradar was only to goad Mr. Jim Saradar into action one way or the other (i.e. "either to develop the website or to transfer the domain to someone who will put it to good use").
6.10 Nor is there evidence that Mr. Jim Saradar has been commonly known by the name Saradar in a way that demonstrates a legitimate interest for purposes of the Policy. Even if Mr. Jim Saradar does exist, the Respondents in this case are John Naffah and Z Publishing Inc. Mr. Jim Saradar is not a Respondent. Mr. Naffahís desire to profit by selling the domain name in issue to Mr. Jim Saradar and/or developing a website for him does not qualify as a legitimate interest for the purposes of paragraph 4a(ii) of the Policy. Further, mere holding of the domain name in issue from April 1996 without putting it to use, coupled with the offer to sell that domain name some 3Ĺ years later in August 1999 to Mr. Mario Saradar of the Complainants is again inconsistent with demonstrating a legitimate interest.
6.11 Finally, in the Panelís view the fact that there are individuals having the surname SARADAR regardless of the existence of Mr. Jim Saradar, misses the point. The Policy identifies the type of circumstances that will demonstrate rights and/or legitimate interests to the domain name in issue by a Respondent. The Respondents in this case fail to bring themselves within paragraph 4c of the Policy or otherwise to demonstrate relevant circumstances. The Complainants therefore succeed in establishing the requirements of paragraph 4a(ii) of the Policy.
6.12 Registered and Used in Bad Faith
Paragraph 4b of the Policy sets out circumstances which "Ö 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 not exhaustive of the circumstances indicating registration and use in bad faith.
6.13 Registration in Bad Faith
The respective cases are summarised in paragraph 5.C.3 above. If Mr. Jim Saradar exists and is the true owner of the domain name in issue, concealment of that identity both in terms of the original registration and the offer to sell to Banque Saradar are indicative of bad faith. Further, the Panelís finding that the Respondents have no rights or legitimate interests in respect of the domain name in issue is also indicative of registration in bad faith.
6.14 Use in Bad Faith
In action in relation to a domain name is within the concept of use in bad faith (The Telstra Case: Case No. D2000-0003). Was the offer to sell the domain name in issue to Banque Saradar for valuable consideration in excess of the Respondentsí out-of-pocket expenses directly related to the domain name? Although that letter does not name a price, the inference from the letter is that the Respondents were seeking substantial consideration in excess of out-of-pocket expenses. For example, the letter opens:
We are writing to you today, in order to offer a once in a lifetime opportunity to acquire the name SARADAR in the online world."
The letter continues:
"We are offering SARADAR.COM for sale, and we would like you to be one of the first to consider the purchase. This is a once in a lifetime opportunity, because the domain will be sold in the near future and once sold, SARADAR will be globally associated with another entity or family, in the growing online world, FOREVER."
Again, the inference is that the Respondents were about to auction the domain name in issue to the highest bidder.
6.15 What then are the circumstances of the Respondentsí behaviour? On the evidence, the Panel considers it more likely than not that the Respondents knew of the Saradar Group and/or Banque Saradar when the domain name in issue was registered. The Panel has concluded on the evidence that the Respondents have no rights or legitimate interests in the domain name. By failing to disclose Mr. Jim Saradarís ownership the Respondents have operated under a name other than the name of the real owner, Mr. Jim Saradar, in offering to sell the domain name to the Complainants and have threatened to auction that name to the highest bidder in the knowledge of the activities of the Complainants gleaned, at the least, from the article in the Daily Star newspaper in August 1999.
6.16 In all the circumstances, the Panel considers on the weight of the evidence presented by the Parties that the Complainants have succeeded in fulfilling the third leg of the requirements under paragraph 4a of the Policy.
For all the foregoing reasons the Panel decides that the Complainants have satisfied each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel requires that the registration of the domain name saradar.com be transferred to the Complainants.
David H Bernstein
Dated: November 22, 2000