WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arab Bank for Investment and Foreign Trade v. Sabah Mahmoud Akkou
Case No. D. 2000-1399
1. The Parties
Complainant is Arab Bank for Investment and Foreign Trade (ARBIFT), P.O. Box 46733 Abu Dhabi, United Arab Emirates.
Respondent is Mrs. Sabah Mahmoud Akkou, Flat No.102, Salem Hafiz Al Mazrouhi Building, Khalidiya, Abu Dhabi, United Arab Emirates.
2. Domain Name and Registrar
The domain names at issue are <arbift.org> and <arbift.net>.
Both domain names are registered with Register.com, 575 Eighth Avenue, 11th floor New York, NY 10018, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (The Center) received by
e-mail and by courier the Complaint of the Arab Bank for Investment and Foreign Trade (ARBIFT) on October 17, 2000 and October 18, 2000 respectively. An Acknowledgement of Receipt of Complaint was sent by the Center to the Complainant, on October 19, 2000.
On October 20, 2000 a request for Registrar Verification was transmitted to the Registrar Register.com requesting to confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain names at issue.
On October 26, 2000 Register.com transmitted via e-mail to the Center, the Registrarís Verification Response, confirming that the Policy is applicable to the disputed domain names and that the said domain names are active. Paragraph 4 of the registrarís service agreement incorporates the Policy by reference.
A formal requirements compliance check was completed by the Center on October 31, 2000. The Center verified that the Complaint meets the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy) and the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules). On October 31, 2000 a Notification of Complainant and Commencement of Administrative Proceeding was transmitted to the Respondent. In this notification the Center advised that the Response was due by November 20, 2000.
The Center received an initial Response from the Respondent by e-mail and by courier on November 2, 2000 and November 7, 2000 respectively. The final Response was received by e-mail and by courier on November 18, 2000 and November 21, 2000 respectively.
On November 20, 2000 an Acknowledgement of Receipt (Response) was sent to the Parties.
On November 29, 2000 in view of the Complainantís election of a single member panel, the Center invited Dr. Mohamed Hossam Loutfi to serve as a sole panelist and transmitted to him the Statement of Acceptance and Declaration of Impartiality and Independence.
Having received Dr. Loutfiís Statement of Acceptance and Declaration of Impartiality and Independence on November 29, 2000, the Center transmitted to the Parties a Notification of Appointment Administrative Panel in which Dr. Loutfi was formally appointed as the sole panelist.
The Administrative Panel made sure that this dispute is to be decided according to ICANNís Policy and Rules as approved on October 24, 1999 (hereinafter the Policy and the Rules) and the Supplemental Rules adopted by the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter, the Supplemental Rules and the Center).
The sole panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.
Having received 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 Respondent".
The fixed date for the decision in accordance with paragraph 15 of the Rules for Uniform Domain Dispute Resolution Policy was December 12, 2000. The decision date was later re-set to December 19, 2000.
4. Factual Background
(a) The Trademark:
The Complainantís trademark ARBIFT was registered on June 24, 2000 with the Commercial Registration Department of the Ministry of Economy and Commerce of the United Arab Emirates, copy of which appears in Annex 3.1 of the Complaint.
The trademark registration relates to Class No.36 and has been used by the Complainant since its establishment as a bank by Union Decree No. 5/76 dated July 7, 1976 in all of its documents, bankís stationaries and has been used both internally in the United Arab Emirates and abroad, aswell as trade directories and advertisements published in international trade directories, magazines, periodicals, and newspapers.
(b) The Respondent registered the domain names at issue while working for the Complainant.
5. The Parties Contentions
5-1 The Complainantís Contentions
The Complainant states that the Respondent has no rights or legitimate interests in respect of the domain names at issue. Additionally the Complainant emphasizes that:
(i) The Respondent was an employee of the Complainant on the date of registration of the aforementioned domain names at issue i.e. on March 10, 2000. Hence, she was therefore fully aware that by applying to register the domain names at issue she was infringing upon and violating the rights of her employer (Complainant).
(ii) The Respondent by registering the domain names at issue is preventing the Complainant from reflecting the mark in corresponding domain names.
The Complainant requests that the domain names at issue <arbift.org> and <arbift.net> be transferred to it.
5-2 The Respondentís Contentions
On November 7, 2000 the Respondent submitted a Response requesting that the administrative panel deny the remedies requested by the Complainant based on the following:
(i) Failure of the Complainant to prove by documents and evidence that the Respondent registered the domain names at issue in bad faith and that she tried to prevent the Complainant from using the domain name for its trademark.
(ii) Non-existence of a registered trademark on the date of registration of the domain name as the trademark was registered by the Complainant on June 24, 2000 and the domain names at issue were registered on May 10, 2000 by the Respondent.
(iii) Possibility of finding many organizations all over the world which would carry the same short form as ARBIFT.
(iv) The local registration attached with the Complaint (Complainant Annex No.3.1) issued in Arabic language included only the long form name and registered as a whole form, which means that any one could use the components words of the name separately in a different order with no responsibilities under trademark regulations.
(v) The Complainant was established since 1976 and has shown no desire to use the domain name as ARBIFT. The evidence to that is that an American citizen has registered the domain name <arbift.com> since 1993 and the Complainant did not show any reaction to such use of the domain name.
(vi) The domain names at issue are still dormant and have never been activated. Hence, the Complainant could not expect that the registration was made in bad faith without referring to the Respondent or asking the latter about the reasons of registering them.
(vii) The Complainant and the Respondent are not competitors and the domain names were not registered by Respondent primarily to disrupt Complainantís business since the latter is a banking organization and the Respondent is an individual.
On November 18, 2000 the Respondent has added in another memorandum that she obtained the domain names at issue for personal and legitimate noncommercial use and convenience without any intention for commercial gain and remuneration and accusing the Complainant of "embarked on debilitating whitch hunt against" [ the Respondent] and "holding out a personal vendetta against [ the Respondent] based on unclear past grudges". The Respondent underlined that she never offered to sell, rent or transfer the domain names at issue to any of the competitors or any other party for any consideration or remuneration.
Based on the allegation of the existence of personal harassment and bad faith towards her, the Respondent requested from the Administrative Panel based on the Uniform Domain Name Dispute Resolution Policy (Policy paras. 4(a), (b), (c) etc.) to deny the Complaint.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration.
Paragraph 4(a) of the Policy establishes three elements that must be proven by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
1. Respondentís domain name is identical or confusingly similar to a trademark or service work in which complainant has rights;
2. Respondent has no right or legitimate interests in respect of the domain name; and
3 Respondentís domain name has been registered and is being used in bad faith.
4. Each of the aforesaid three elements must be proved by a complainant to warrant relief. They will be addressed hereinafter, after first addressing jurisdiction.
The Administrative Panel is satisfied that all fundamental due process requirements are met. Such requirements include inter alia that both parties have notice of the proceeding. No objection has been made that the necessary parties are not properly before this Panel nor that this Panel lacks any authority to rule upon the requested relief. (See case WIPO case No. D2000-0431).
Hence, the Panel undoubtedly has jurisdiction to decide this dispute as submitted.
6-B-1 The identity or confusing similarity of the Domain Name with the Trademark:
It is generally understood that an exclusive right in a trademark can be acquired with, or without, registration. This is the case when the mark has been established on the market (See WIPO cases Nos. D2000-0003 and D2000- 0442).
Since the Complainant has been established as a bank by a Union Decree No.5/76 dated July 7, 1976 by the State of United Arab Emirates, Libya, Arab Foreign Bank and Banque Exterieure DíAlgerie, a right to the trademark ARBIFT was acquired prior to the Respondentís domain name registration.
It is already well established that the specific top level of the domain name such as "org", "net", "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. (See WIPO casesNos.D2000-0135 and D2000-0429).
The domain names <arbift.org> and <arbift.net> are identical with the trademark ARBIFT except for the addition .org and .net. The close and confusing similarity between the domain names at issue and the trademark of the Complainant is evident.
Based on the above-mentioned the Administrative Panel is of the opinion that the Respondentís domain names arbift.org and arbift.net are identical or confusingly similar to Complainantís trademark "ARBIFT". Therefore, the requirements of paragraph 4(a) (i) are met and satisfied.
6-B-2 Rights or legitimate interests in respect of the domain name:
The Administrative Panel is convinced that the Respondent has not succeeded in providing any evidence or any circumstances giving rise to rights or legitimate interests in the domain names at issue.
For example, the Panel does not see the slightest indication of a legitimate trademark interest in the Response that would allow the Respondent to claim a legitimate right or interest in the disputed domain names.
Therefore, the requirements of paragraph 4(a) (ii) of the Policy have been properly proved by the Complainant.
6-B-3 Bad faith
The study of the case leads to an undoubtful conviction that the Respondent had registered the domain names at issue in bad faith, especially that:
(a) The Respondent has not proven that she has any prior rights or legitimate interests in the domain names.
(b) The Respondent was employed by the Arab Bank for Investment and Foreign Trade for 17 years and was fully aware of the name of her employee i.e. ARBIFT.
(c) The Respondent confessed in her Response that she had "unclear past grudges" with her former employer i.e. the Complainant.
(d) The Respondent is an individual, not an "organization" to qualify for registration and use of ".org" in her domain name.
(e) There is no evidence that the Respondent has associated the domain name with any website or online presence (See WIPO cases Nos. D2000-0022 and 2000-0023).
The reasonable conviction from the above mentioned facts is that the Respondent had registered the domain names at issue in bad faith in order to benefit from it for valuable consideration at an opportune moment.
This Panel finds Respondentís certain constructive and actual knowledge of Complainantís trademark rights prior to registering the disputed domain names to be strong evidence of registration of the domain name in bad faith (See WIPO case Nos. D2000-0018 and D2000-0429). The above mentioned facts do not provide a "safe harbor" to unlawful activities as demonstrated and the requirements of paragraph 4(a) (iii) of the Policy has been properly proved by the Complainant.
The only plausible conclusion to draw from these facts is that the Respondent intended to warehouse for her own use the domain name at issue. The effect of this warehousing is to prevent the Complaint from reflecting this trademark in a corresponding domain name (See Case WIPO No. 2000-0034). All circumstances lead this Administration Panel to conclude that all the prerequisites for the transfer of the domain names according to the Policy and the Rules are fulfilled.
With respect to the request for transfer of the domain names at issue, the Panel decides that ARBIFT has met its burden of proving (a) that the domain names at issue are identical or confusingly similar to the ARBIFT trademark (b) that the Respondent has no rights or legitimate interests in respect of the domain names and (c) that the domain names have been registered and used in bad faith by the Respondent.
Pursuant to paragraph 4(i) of the Rules, this Administrative Panel orders the transfer of the disputed domain names <arbift.org> and <arbift.net> to the Complainant.
Dated: December 19, 2000.