WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Riyad Bank v. J. Boschert

Case No. D2001-0820

 

1. The Parties

The Complainant is Riyad Bank, a Saudi Arabian corporation of Riyadh, Saudi Arabia. The Complainant is represented by Mr. Stephen Reid, of Simmons & Simmons, Solicitors, London, UK.

The Respondent is Mr. J. Boschert of St Charles, Missouri, USA. The Respondent is represented by Mr. Zak A. Muscovitch of Neinstein & Associates, Barristers & Solicitors of Toronto, Ontario, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is <riyadbank.com>. The domain name is registered with Network Solutions Inc. of Herndon, Virginia, U.S.A. ("the Registrar"). The name was registered on June 18, 1998.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center on June 21, 2001 (email) and June 21, 2001 (hard copy). An amendment to the Complaint was filed on June 26, 2001 (email) and June 29, 2001 (hard copy).

On June 22, 2001, the Center sought registration details from the Registrar. On June 25, 2001, the Registrar advised that the registrant of the disputed domain name and the Administrative, Technical, and Billing Contact is the Respondent at the above address. The Registrarís Service Agreement incorporates the Policy and requires the registrant to submit to a properly initiated complaint under the Policy; that the status of the disputed domain name is "active" and that a copy of the Complaint had been received.

On July 3, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. It formally notified the Respondent by post/courier, facsimile and email of the Complaint and amended Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The formal date of the commencement of the proceeding was accordingly July 3, 2001. A Response was filed by the Respondent on July 23, 2001 (email) and July 25, 2001 (hard copy).

A single member Panel was requested by the Complainant, which has paid the requisite fees.

On August 3, 2001, the Center notified the parties of the appointment of the Panelist, who had submitted a Statement of Acceptance and Declaration of Impartiality. The Panel was initially required to give its decision by August 14, 2001. However, because of the developments discussed below, the date has had to be extended to August 29, 2001.

Without seeking leave from the Panel, the Complainant purported to file a Reply to the Response. Because of the allegation by the Respondent in the Response of reverse domain name hijacking, the Panel considered it appropriate to give the Complainant an opportunity to file, in effect, a defence to what amounted to a counterclaim. Consequently, the Panel decided to consider the Reply. The Panel allowed the Respondent to file a rebuttal addressing fresh matters contained in the Reply. This was necessary because the Complainant in its Reply sought to add another domain name, <riyadbank.net>, which it alleged that Respondent had registered on July 5, 2001, two days after the commencement of the Administrative Proceeding in respect of <riyadbank.com>.

Again without seeking leave from the Panel, the Complainant provided additional material about certain email communications between the parties. It also forwarded further documents to show that the disputed domain name resolves into a pornographic site. The Panel felt obliged to allow Respondent a right of reply to these communications from the Complainant.

The Panel has decided against the Complainantís request to include a Complaint in respect of an additional name <riyadbank.net>. The application was made at too late a stage in the process. Before a Complaint about the additional name could be considered, Registrar verification would have to be obtained and Respondent would have to be given the usual time within which to file a Response. It is doubtful whether all this could be accomplished and a decision given before the Panel becomes unavailable for several weeks on August 31, 2001. The Complainant, if it wishes, will have to file a separate Complaint.

That is not to say that the Panel cannot take into account in reaching its decision on the name <riyadbank.com>, the action of the Respondent in registering <riyadbank.net> when he did.

The Panel stresses that parties should not presume a right to file further pleadings as the Complainant did here. An application for leave should always be made with supporting grounds. Parties are also reminded that they should not, as did the parties to this dispute, attempt to communicate directly with the Panel or send the Panel copies of emails to the WIPO Center.

The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11(a) of the Rules.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with paragraph 2(a) of the Rules; and that the single member administrative panel was properly constituted.

 

4. Factual Background

The Complainant has been trading under the "RIYAD BANK" name in Saudi Arabia since 1957, the United Kingdom since 1984, the USA since 1990, and Singapore since 1997.

The Complainant has applied to register the words "RIYAD BANK" and logo as a trademark in Saudi Arabia, Application No. 34597 in Class 36 in respect of financial services. This application for the Saudi Arabia trademark registration "RIYAD BANK" was filed on June 22, 1996, some two years prior to the registration of the domain name on June 18, 1998, by the Respondent. The Complainant owns the domain name <riyadhbank.com.sa>. It has applied for UK trademark registration.

The Complainant was established in 1957, as a full-service commercial bank. As well as being the oldest publicly-held bank in Saudi Arabia, it is one of three 100 per cent Saudi-owned banks in the Kingdom of Saudi Arabia. The Complainant has 188 branches throughout Saudi Arabia, one in London, an Agency office in Houston, Texas and a Representative office in Singapore. It offers a whole range of investment products and services to its customers. Its financial revenues are great. No website has been set up at the disputed domain name.

 

5. Partiesí Contentions

Complainant:

Trademarks which have not been registered can be protected under the Policy, as demonstrated in WIPO Case Nos. D2000-0014 and D2000-0015, Bennett Coleman & Co. Ltd. v. Steven S. Lalwani and Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company (theeconomictimes.com/thetimesofindia.com). The standard necessary to establish a trademark under US law depends on actual use.

The Complainant has a substantial reputation and goodwill in its Ďcommon lawí mark gained from its trading history, the application for a trademark and its domain name.

The Respondent has no rights or legitimate interests in respect of the domain name. Before being given notice of the dispute, Respondent was not making use of, or did not have demonstrable preparations for use of, the domain name, within the meaning of paragraph 4(c)(i) of the Policy. Further, there is no evidence that the Respondent is commonly known by the domain name or that he is making a legitimate non-commercial or fair use of the domain name.

The domain name should be considered as having been registered and used in bad faith. The reasons given by the Complainant for this contention are as follows:

By reference to paragraph 4(b)(i) of the Policy, the domain name was acquired by the Respondent primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the rightful owner of the "RIYAD BANK" trademark or to a competitor of the Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.

This is evidenced by the email correspondence of February 16 and 19, 2001, exhibited to the Complaint. Mr. Alan Thompson, CEO of the Complainant, received an email from the Respondent purportedly in response to an offer that Mr. Thompson had himself made to buy the <riyadbank.com> registration for $5.6 million. The email from Respondent requested that the purported offer of $5.6 million be re-submitted through the <riyadbank.com> website. The Complainant conducted an internal investigation, to prove that the original email purporting to be an offer for the domain name from Mr. Thompson, originated from outside the Complainant. This allegedly fraudulent email is effectively an offer to sell the domain name to the Complainant. The Complainant has not at any time offered by buy the domain name from the Respondent. (Note: This allegation was changed in a subsequent document from the Complainant.)

By the widespread use and reputation of the "RIYAD BANK" name and trademarks, it is inconceivable that the Respondent registered the domain name without knowledge of the Complainantís rights in and to the "RIYAD BANK" name and trademarks.

In the ten year period up to 1999, the Complainantís balance sheet increased from SAR 42.5 to SAR 64.4 billion (EUR 13.22 to EUR 20 billion), an increase of 52%. The Complainantís net income increased by over 300% during the same period reaching SAR 1,102 million (EUR 342.6 million) and its equity base by 74% to SAR 8 billion (EUR 2.49 billion).

In the area of retail banking, the Complainant offers a complete range of investment products and services to its clients, including local and international brokerage. Its range of mutual funds offers wealth enhancement opportunities through investments in both local and international markets. The Complainant received "Best Fund Manager" awards over one and three year terms in 1998 and 1999.

In the area of corporate banking and finance, the Complainant is the leader in syndicate lending and project finance in Saudi Arabia. Its substantial capital base has enabled it to play an important role in lending, underwriting and arranging syndicated loans in the oil, gas and petrochemical sector. In the last two years, the Complainant has acted as manager for loan syndications totaling SAR 38 billion (EUR 11.94 billion).

It is inevitable that members of the public will believe that any website activated at the domain is associated with or endorsed by the Complainant when that is not the case.

Respondent:

Complainant has no registered trademark for "Riyad Bank".

Complainant relies on Bennett Coleman & Co. Ltd. v. Steven S. Lalwani, WIPO Case No. D2000-0014, and Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO Case No. D2000-0015 for the proposition that the UDRP protects marks which are not registered. In those cases, the Complainant had trademark registrations in the United States and lapsed trademark registrations in India. This Complainant has no trademark registrations anywhere in the world. Nevertheless, a common law trademark right may be asserted pursuant to the UDRP. In order for a common law trademark to exist, a Complainant must demonstrate widespread use as well as a distinctive mark. It is conceded that Complainant has used the mark "Riyad Bank" since 1957, in connection with its banking operations. Nevertheless, Complainantís mark does not constitute a "trademark" as known to law, because it is generic, descriptive, and a geographical designation.

Pursuant to Saudi Arabiaís trademark laws (See Royal Decree No. M/5 of February 5, 1984), the following are examples of marks that cannot be registered as marks:

(a) Marks without distinctive features; and

(b) Geographical names, the use of which is likely to cause confusion as to the origin of the goods, or might lead to an unwarranted monopoly thereof.

"Riyad Bank" cannot be registered a "trademark" as it merely refers to a bank in the city of Riyad, and cannot therefore be exclusively owned by any one party. This is the reason that the Saudi Arabia authorities have refused registration to Complainant since June 1996.

Complainant has failed to provide any evidence that its generic mark has acquired a "secondary meaning" that would allow it to be considered a trademark. Without a single trademark registration, it is incumbent upon Complainant to evidence a secondary meaning for a generic term.

Respondent launched his active website in January 2000. But for some short outages, Respondent has maintained an active presence on the Internet at this website. Respondentís website is to be dedicated to stories about Riyad Bank, opinions from clients and employees of Riyad Bank, and suggestions for Riyad Bank. Respondentís website is currently undergoing renovations and further development. It is not currently fully operational. Respondentís co-web developer is a former employee of Riyad Bank and, as such, has a legitimate interest in expressing his views on Riyad Bank.

The Respondentís use of the domain name to designate a website for criticism and commentary about the Complainant constitutes legitimate non-commercial use and fair use within the meaning of the Policy.

It is the policy of the Kingdom of Saudi Arabia to stifle this type of freedom of speech and this policy must not be condoned by the Panel. Respondent is exercising his rights to freedom of speech under the First Amendment of the United States of America. Respondentís website, by operating outside of the Kingdom of Saudi Arabia, is able to provide criticism of the Riyad Bank without fear of reprisals. Furthermore, customers and employees are permitted to voice their opinions anonymously.

Complainant accuses Respondent of "Bad Faith" registration. Respondent acquired the subject domain name in order to launch his website about Riyad Bank and thereby exercise his rights to freedom of speech and to convey important information concerning Complainant to prospective employees and clients, but not to sell the name or divert customers.

Respondent launched a website in January 2000, which stated, inter alia; (when viewed by the Panel on August 10, 2001, as invited by the Respondentís counsel):

(a) It is not owned or operated by the Complainant;

(b) It is not engaged in banking;

(c) Complainant is Ďtrying to shut us offí (the promised Ďfull storyí results in an inoperative site);

(d) The site is dedicated to former and current employees of the Complainant to enable them to put job related comments, stories, opinions and suggestions in complete confidence with privacy and without fear of recriminations;

(e) Respondent is a supporter of employeesí rights and has relatives and friends who worked and who are still suffering at Riyad Bank;

(f) The siteís sole purpose is to stop unfair practice by employers, in general, and by Riyad Bank, in particular.

Complainant alleges that Respondent asked the CEO of Complainant to confirm an offer of US$5.6 million to purchase the name: Complainant denies ever sending this email to Respondent. When Respondent replied to the email purportedly from Complainant, Respondent could not believe that Complainant would make such an outrageous offer in order to silence Respondentís website, and therefore asked for confirmation. It was Respondentís intention to determine whether or not Riyad Bank actually made the offer. At no time did Respondent bargain or negotiate with Complainant. This fact evidences Respondentís intention legitimately to use the subject website for its own purposes and not to sell it to Complainant. Respondent contends that the person who conducted the "investigation" of the origin of the email offer is the same person who sent a $1 million offer to Respondent. Complainant sent the offers to purchase the name from Respondent in order to entrap Respondent into creating evidence of "bad faith".

Complainant is familiar with the content and purpose of Respondentís website and has brought these proceedings on the basis of a non-existent trademark in the hopes of Respondent not defending and Complainant winning by default.

The Respondent asserts that this is a case of reverse domain name hijacking.

Complainant Reply and Subsequent Allegations:

The Respondent misrepresents the standard necessary to establish a common law mark in US law.

Complainantís mark is not a geographic designation when considered in its entirety. Industry custom includes geographic designations in the name of banking institutions (eg. Deutsch Bank, Bank of Tokyo, Bank of New York).

Even if the mark were a geographic designation, it has acquired a secondary designation by virtue of its trading worldwide for many years.

The Complainantís mark is not generic. No other financial institution in the United States is known by that name. In any event, registration of a generic name is only in good faith if the registrant does not know that he or she will be infringing third party rights.

The Respondentís contention that he launched an active website in January 2000, is untrue. Searches in February and May 2001, could not locate a webpage. The website was set up on receipt of the complaint in order to establish a defence. The current lack of contact proves this.

The fact that the co-developer of the site is a former employee of the Complainant is irrelevant.

The right of free speech under the US constitution does not apply because disputes have to be decided under the Policy without reference to any national law. In any event, under US case law, the domain name would not be protected by the U.S. Constitution. ICANN and WIPO are not bound by it.

The Respondentís admitted intention is to divert customers of the Complainant to the website. The allegation that the website has been active since January 2000, is untrue and evidence of bad faith.

Respondent offered to sell the name on the webpage located at the domain name on February 21 2001. The site definitely says that the disputed domain name is for sale and invites an offer.

The registration of the <riyadbank.net> name after the dispute process was commenced for the <riyadbank.com> name is evidence of bad faith.

The Complainant has now conducted a deeper investigation into the email communications alleged to have occurred between the parties. As a result of this investigation, it is now apparent that the email, which purported to offer to purchase the <riyadbank.com> domain for US$1 million, was in fact sent by a former employee of the Complainant in the course of his investigation into the hoax email referred to in the Complaint.

Complainant has established that the sender of the second email was a member of the Complainantís Network Development department, named Rizwan Jamal. Mr. Jamal has subsequently left the employ of the Complainant. The Complainant has now contacted Mr. Jamal who has explained that he sent the email as part of his investigation into why Alan Thompson (the Complainantís CEO) received the first email (purportedly from an "Allen Thompson" [sic]), when there was no record of his having sent any emails to the Respondent. Mr. Jamal was attempting to demonstrate that any person, upon clicking on the "Click here to send an "offer to the owner" link which was present on the <riyadbank.com> website on February 21, 2001, or using the <domains.com> website (at which the link was directed), could enter any name and email address and thereby create and transmit a hoax offer to purchase the domain name.

In sending the second email, Mr. Jamal established that the link automatically sent the "offer" to Respondent along with the name and email address entered by the person who clicked on the link and that this link would, therefore, enable an unscrupulous individual to generate hoax offers for the domain name from any person, so long as he knew their email address.

Mr. Jamal had no authority to purport to make an offer to purchase the domain name as part of this investigation and until very recently the Complainant was unaware that he had in fact done so.

On August 13, 2001, the Complainant advised the Panel that the Respondent had links to items of pornographic content available through a linked website <nudite.com>.

The Complainant submits that the results of the investigation in which Mr. Jamal took part demonstrates that no email submitted through the link can be relied upon as evidence that a bona fide offer to purchase the domain has been made.

Respondent Ė Rebuttal and Sub-Reply:

The <riyadbank.net> name was registered "because it was available." It was registered as a Ďback upí in case Respondent loses the <ryadbank.com> name. Registration of the ".net" name proves Respondentís intentions to set up a site for persons with some grievance or information about the Complainant.

Complainant is focused on seizing any name that could be used by persons such as Respondent for the free expression of criticism of Complainant. The date of January 2000, was a typographical error for January 2001, when Respondent referred to the date when his website became active.

The Respondent has had nothing to do with the link of his website to a pornographic one. The unfortunate situation came about because his original web-hosting site went out of business and he has been unable to transfer to another. Respondent is unable to remove the Ďjava boxí on the website which facilitates redirection.

Respondent complained on August 20, 2001, to the former web-hosting service domains.com which replied on the same day that there was the possibility of abuse in that anyone could redirect the domain. Domains.com wrote to all clients suggesting remedial action. Respondent does not know who is forwarding its site onto a pornographic site.

In view of the Complainantís revelations about Mr. Jamalís activities, it is remarkable that Complainant continues with its initial allegation that the email from its President was sent by Respondent, Mr. Jamal, alleges Respondent, assisted in the fabrication of a case against Respondent.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Identical Nature

The Panel is satisfied that the disputed domain name is identical to the Complainantís unregistered mark. The Panel will not be drawn into a dispute whether or not the mark is or is not capable of being registered under Saudi Arabian law. The Panel considers that the common law mark is sufficiently well-known (at least in the United States) by reason of the Complainantís extensive banking operations since 1957. Accordingly, the Complainant has proved a common law mark, using the tests for a common law mark found in the US, which tests are similar to those in other jurisdictions with which this Panel is familiar.

The Panel does not accept that the mark is generic or geographic. The value of the mark lies in the juxtaposition of the words Riyad and Bank. This combination raises in the mind of the reader the concept of a bank centred in the Saudi Arabian capital. The word Riyad is hardly generic. The case is not like, for example, the Pet Warehouse case (WIPO D2000-0105), where both words of the mark were generic, or the WIPO case D2001-0749 Amana Company, L.P. v. Vanilla Limited, where the words of the registered mark "deep freeze" were both generic.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís rights or legitimate interests to the disputed domain name. The Complainant has the onus of proof on this, as on all issues. The Complainant has not given the Respondent any rights to use the disputed domain name. The Panel considers that the Complainant has satisfied this criterion.

The Panel finds the Respondentís allegations of demonstrable preparations to set up a legitimate business unconvincing. No affidavit evidence or documents were produced as to the date when the site was opened. The site, on Respondentís own admission is Ďnot fully operationalí. Nor is the situation of the alleged co-developer of the site relevant. He is not the registrant of the name and can have no standing in this dispute.

A critical question is whether the Respondent was aware of the Complainantís mark before it registered the domain name. The Panel notes that the Respondent resides in a non-Arab-country. Yet he has alleged neither absence of knowledge of the Complainantís mark nor any legitimate interest in using the name. The Complainantís mark is reasonably well-known throughout the world. The website co-developer is an ex-employee of the Complainant. In the absence of any suggestion to the contrary, the Panel infers that the Respondent was aware of the Complainantís mark when he registered the name. The fact that the Respondent intends to use the site as a repository for opinions, stories and employee grievances about the Complainant further shows that he was aware of the Complainantís mark at the date of registration.

Bad Faith

The Panel considers that the domain name was registered and is being used in bad faith. The Panel has already concluded that the Respondent knew of the Complainantís mark at the time of registration. There is also suggestion of the name being offered for sale on February 21, 2001, which hardly fits with the Respondentís claim to have registered a name for a website to attract comment and grievances about the Complainant.

The Panel has no means to ascertain where the truth lies regarding the allegation about the alleged offer by the Complainant to buy the name from the Respondent for a huge amount of money. Only an oral hearing would get to the bottom of the various allegations set out in the pleadings. The Panel does not take the allegations into account either way. However, the Panel considers it unwise to rely on an offer to sell the name found in the website on February 21, 2001. That date is too close to the date on which Mr. Jamal was carrying out his unorthodox manoeuvres.

The Panel has inferred that bad faith registration occurred. Respondentís web co-developer was a former employee of the Complainant Ė the intention of Respondent for registering the name was to attract to the website persons wishing to register views about the Complainant.

In view of the Respondentís explanation in that regard, the Panel does not decide anything pejorative to the Respondent arising out of an alleged pornographic site being available on Respondentís site. The Panel does note however that Respondentís inability to transfer to another web server should have justified a fuller explanation.

The consequence of setting up a website, incorporating in the domain name the mark of a Complainant plus an indication that the site is for complaints, is exemplified by the decision of the Panel in The Royal Bank of Scotland Group plc v. natwestfraud.com & Umang Malhotra (WIPO D2001-0212). There the Panel discussed pejorative expressions added in a domain name to the words of a famous mark. The Panel there commented that a Panel has no jurisdiction to stop defamatory material: It has to decide cases on the basis of the Policy and not on the constitutional provisions of a Respondentís country of origin. The Panel there held that the name <natwestfraud.com> was not confusingly similar to the mark "natwest".

This case is different. There is no word on the domain name which would indicate that this is a site established to receive grievances about the Complainant. There is nothing to differentiate in the mind of the Internet user a site to provide information about the Complainant (likely to be promotional) from a site which seeks to attract pejorative or frank comment about the Complainant.

In some WIPO decisions, a genuine criticism site undertaken by its proprietors with no intent other than to protest at, ridicule or mock its targets does not fall foul of the Policy regardless of the outrageousness or the vigour with which protests are made. (See Britannia Building Society v. Britannia Fraud Prevention, WIPO D2001-0505) where the name <britanniabuildingsociety.org> was not transferred to the Complainant when the Respondent had set up and maintained a website highly critical of Complainant. On the facts, the Panel held that the Respondentís website had always been maintained as a genuine criticism site and not as an excuse for cyber-squatting. There had been no offer to sell the name.

In D2001-0505, unlike in the <natwestfraud.com> case, there had been no clue in the disputed domain name to indicate a possible protest site. This Panelist is not sure whether he would have come to the same conclusion in D2001-0505. The Panel refers to the decision in WIPO D2001-0359 PWC Business Trust v. CíEst SA (<price-waterhouse-coopers.net>).

That debate does not need to be resolved because this case clearly differs from the D2001-0505 in that there is no website operating as a repository of criticism. It is only promised by the one page already discussed. Despite the disclaimer on the website, the name will inevitably confuse persons with a genuine desire to learn something about the Complainant and its business. The opportunistic registration of <riyadbank.net> after the present proceeding had been commenced is also evidence of bad faith. The Respondent admits this registration was an insurance against this present proceeding not being resolved in his favor. The Panel therefore finds that the name is being used in bad faith.

 

8. Reverse Domain Name Hijacking

Once again, a somewhat weak plea, unbuttressed by reference to other cases, has been made for a finding of reverse domain name hijacking. Such a plea is frequently made but infrequently granted. See the discussion in WIPO D2001-0217, Koninklikje KPN N.V. v. Telepathy Inc. The Panel adopts that discussion of this topic.

 

9. Decision

The Panel determines that:

(a) The disputed domain name is identical to the Complainantís common law mark.

(b) The Respondent has no rights or legitimate interests in respect of the domain name.

(c) The disputed domain name has been registered and is being used in bad faith.

(d) No declaration of reverse domain name hijacking be made against the Complainant.

The Registrar is required to transfer the domain name <riyadbank.com> to the Complainant.

 


 

Hon. Sir Ian Barker
Sole Panelist

Dated: August 24, 2001