WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel
Case No. D2001-0907
1. The Parties
The Complainants are Talal Abu-Ghazaleh International, Talal Abu-Ghazaleh & Co, Abu Ghazaleh Intellectual Property and Aldar Audit Bureau, all of P.O. Box 921100, Amman 1192, Jordan. They will be referred to respectively as TAGI, TAGCO, AGIP and AAB.
The Respondent is Fadi Mahassel of P.O. Box 4305, Costa Mesa, California 92628, USA.
2. The Domain Names and Registrar
Each of these domain names is registered with Network Solutions, Inc., of Herndon, Virginia, USA. According to Network Solution's Verification Responses, the Respondent is in each case the Registrant and Anis Wakim, of the same address as the Respondent, is the Administrative and Billing Contact.
3. Procedural History
(1) The Complaint in Case D2001-0907 was filed by e-mail on July 14, 2001, and in hardcopy on July 17, 2001. It was notified to the Respondent on July 26, 2001.
(2) The WIPO Arbitration and Mediation Center has stated that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified to the Respondent in accordance with the Rules, paragraph 2(a);
- a Response to the Complaint was filed on August 27, 2001, by email; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in the UDNDRP. I would note that, according to the Respondent, there was a delay in his receiving the Complaint with all attachments. He was, however, able to submit his Response thereafter in 15 days. No procedural unfairness has therefore resulted. I would also refer to the Respondent's objection that the Complaint exceeds the maximum permitted length (5000 words) by 547 words. The word limit referred to in the WIPO Supplemental Rules, Paragraph 10a), is only applicable to the description of grounds on which the Complaint is made, i.e. (i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that the Respondent has no right or legitimate interest in the domain names; and (iii) that the names were registered and are being used in bad faith. The relevant part of the Complaint in which this description is made does not exceed the 5000 word limit. The objection is therefore rejected.
(3) As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The date scheduled for issuance of a decision is September 13, 2001.
(5) No extensions have been granted or orders issued in advance of this decision.
(6) The language of the proceedings is English.
4. Factual Background
(1) The Complainants form a group of professional service firms and are stated to be corporations in which the majority shareholder is Mr. Talal Abu-Ghazaleh. He has been practicing as a public accountant, management consultant and intellectual property expert since 1960. The umbrella corporation, TAGI, has existed for over 28 years and operates out of every major city in the Arab world, with liaison offices in Europe and North America. The other Complainants provide professional services to over 3000 clients: TAGCO in accounting, management consulting, quality assurance and project management; AGIP for intellectual property rights in the Arab world; and AAB in accounting, auditing, taxation, financial and administrative consulting services. The Complainants exhibit examples of the business name registrations which they hold in a number of Arab countries. The Respondent does not challenge the assertion that, taken together, the work of these firms is extensive and gives rise to a very considerable reputation, particularly amongst those who do business in the Middle East.
(2) The activities of TAGI and its associated companies are supported by a portfolio of registered trade marks held in the name of one or other of the Complainant companies which are listed among the Complainants' exhibits. These comprise the name of the company, with or without a logo. 15 have been registered and another 26 are awaiting acceptance. The registrations and applications are mainly for classes 16, 35, 41 and/or 42 and are for some 16 Arab states of the Middle East and North Africa. Several of those accepted bear a registration date in late 1997, and some are of earlier date.
(3) The Respondent is apparently a resident of Costa Mesa, California, where he carries on activities through an unnamed company and in association with Mr. Anis Wakim, using Mr. Tony Debbas, a Certified Public Accountant, for at least the purpose mentioned in the next paragraph. The respondent claims to carry on a pet grooming service in Costa Mesa under the name, Talal Abu Ghazaleh, but the claim is contested by the Complainants. On November 12, 2000, Mr. Wakim applied for, and on November 17, 2000, was granted, the registered Californian trade mark, "Tal Alabu Ghazaleh" as a service mark in Class 42 for pet grooming.
(4) In previous proceedings before the WIPO Arbitration and Mediation Center in accordance with the UDNDRP, the "father figure" of the present Complainants, Mr. Abu-Ghazaleh, laid a complaint against the present Respondent and Mr. Debbas in respect of the registration of the first of the Domain Names currently in issue, <talalabughazaleh.com>. Mr. Debbas was the first registrant of that domain name, who subsequently transferred it to the present Respondent (see below, para. 5A2(i)). In the Decision in that case, No. D2000-1479, the sole panelist rejected the complaint on the following grounds:
(i) that in relation to the UDNDRP, Para. 4(a)(1), the complainant did not have standing to raise the complaint since the registered trade marks relied upon were not registered by him but by one or other of the companies in the group;
(ii) that while there was similarity between those trade marks and the respondents' domain name, there was no sufficient evidence that this would lead to confusion, since the categories of services for which the marks and domain name would be used – accounting and IP by the complainant, pet grooming by the respondents – were not similar;
(iii) that the respondents' choice of domain name was probably inspired by the complainant's name, but, given that no likelihood of confusion had been established, this of itself could not constitute bad faith within the meaning of the UDNDRP, Para. 4(a)(3); and
(iv) that on the evidence presented in the proceedings, the second respondent (Respondent in the present proceedings) had operated a pet grooming business since August 1999, and so had a right or legitimate interest in the domain name within Para. 4(a)(2).
All these grounds, set out on in the Reasons for the Decision, are also referred to in the final Decision section, save the last of them.
5. Parties’ Contentions
In order to satisfy the requirements of the UDNDRP, the Complainants assert the following:
(1) The present Complainants are not precluded from pursuing the Complaint in respect of any of the domain names in issue by the Decision in Case D2000-1479 because
(i) in consequence of that decision (see para. 4(4)(i) above), the present Complaint is brought by the companies which own the relevant trade mark registrations. Since the previous Complainant, Mr. Abu-Ghazaleh, was found to have no standing to assert those rights, they have not been actually and necessarily determined and so no finding of res judicata can arise. Whatever may have been decided in D2000-1479 concerning Mr. Abu-Ghazaleh's right in his personal name addresses a completely different issue;
(ii) Case D2000-1479 did not relate to three of the four domain names now in issue; and
(iii) there is newly discovered evidence which could not reasonably have been foreseen at the time of the earlier complaint, viz, that the present Respondent has had no legitimate pet-grooming business using the disputed name; and in particular, he concealed from the previous Panelist that the Californian trademark for that alleged business was secured only after the earlier complaint was lodged, and instead presented the mark registration as evidence of prior legitimate use of the service mark.
(2) That the actions of the Respondent and his associates were in the following sequence:
(i) <talalabughazaleh.com> was registered in the name of Tony Debbas on August 11, 1999. When Mr. Abu-Ghazaleh learned of this on June 11, 2000, he requested that the domain name be transferred to him, being identical with his personal name. Mr. Debbas did not respond but the name was transferred to the present Respondent on July 7, 2000. On that day, the Respondent registered <alderauditbureau.com>. On July 24, 2000, Mr. Abu-Ghazaleh repeated to the Respondent his request for transfer of the first domain name (he did not then know of the second).
(ii) After Mr. Abu-Ghazaleh had filed the Complaint in Case D2000-1479 referred to above (on October 30, 2000), the Respondent registered the domain names, <talalabughazaleh.net> and <talalaubghazaleh.org> (on November 11, 2000). The next day, the Respondent's associate, Mr. Anis Wakim, filed the application for a California State trademark which was registered on November 17, 2000, as No. 054179. In the response in Case D2000-1479, filed on November 27, 2000, this registration is submitted as evidence that the Respondents had a legitimate interest in the domain name there at issue.
(3) The publicly available databases of business records in the State of California do not list any business operating the name, Tal Alabu Ghazaleh, or any other business owned by the Respondent. In particular there is no Fictitious Business Name Statement on file in California for that name, such as would be required by the California Business and Professional Code, para. 17910.
(4) None of the four domain names has been used to support the Respondent's alleged pet grooming service.
(5) These facts together establish that the disputed domain names are identical with or are confusingly similar to the names and marks of the Complainant companies; that they were all registered without right or legitimate interest, but were, on the contrary, obtained in bad faith.
Apart from the procedural point already referred to above (see Para. 3(2)), the Respondent asserts the following:
(1) In substance, the issues in this Dispute have already been determined in D2000-1479, since they are identical. They should therefore not be re-heard by a different panelist.
(2) None of the grounds which, according to Decision D2000-1490, would justify admitting a "refiled complaint", are here made out.
(3) The Respondent's conduct does not amount to a clear case of cybersquatting or cyber piracy.
(4) The essential element in the domain names at issue – talalabughazaleh – is identical to that which was not transferred from the Respondent in Case D2000-1479. The finding there made that there is no confusing similarity should accordingly stand.
(5) The legitimate business interest of the Respondent is now evidenced by affidavits from him, an associate and five clients.
(6) The Complainants have failed to establish that, at the date of registration of the domain names in dispute or thereafter, the Respondent acted in bad faith in procuring and maintaining the registrations.
6. Grounds for Decision
A. Res Judicata
(1) The UDNDRP establishes a rapid system of relief against "cyber-squatting" upon domain names. It is accordingly available only in plain cases which can be established by evidence submitted under a strictly delimited procedure. Because this is so, it has not been easy to arrive at fair principles relating to the re-submission of issues already decided. In Case D2000-1490 (Creo Products Inc v. Website in Development), however, the Panelist, drawing substantially upon the earlier decision in Case D2000-0703 (Grove Broadcasting v. Telesystems Communications), laid down guidance on the matter. In essence he held that objection to a "re-hearing" could only be sustained in respect of a "Refiled Complaint"; but that in cases so defined a re-hearing would not be allowed save in an exceptional case. Four types of exceptional situations were identified as examples: (a) where in the first proceedings there has been serious misconduct on the part of a panelist, witness or lawyer; (b) where perjured evidence has been offered in the first proceedings; (c) where credible and material evidence has been discovered which could not have been reasonably foreseen or known in the earlier proceedings; and (d) where there has been a breach of natural justice.
(2) The Panelist treats as a Refiled Complaint "a subsequent complaint under the Uniform Policy in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint". He thereby holds that a restriction upon a re-hearing can arise only in circumstances which in many civil jurisdictions are treated as res judicata in a strict sense; there is no such restriction in other circumstances of issue estoppel, as, for instance, where the second case will lead to a decision on an equivalent issue arising between different parties. Given the special constraints applying to proceedings under the Uniform Policy, in my view the Panelist's approach is correct both in relation to the limited range of disputes which should be treated as res judicata and in relation to the exceptional circumstances which would justify a re-hearing of cases which fall within this narrow range. I shall accordingly apply the same principles.
(3) This dispute is not a re-filed complaint. It was initiated by four corporate Complainants who were not parties to Case D2000-1497. This has happened because the first ground of decision in that case was that the personal complainant had no standing to proceed, as he was not the proprietor of the relevant registered trademarks. The current Complainants have therefore had no opportunity to make their case under the UDNDRP. It cannot be maintained that the previous Complainant has done so for them, when it was specifically held that he had no power to act otherwise than in their names. To refuse to admit the present Complaint would deprive them of their right to be heard.
(4) I would also observe that in any case an objection against re-hearing could only arise to the first of the domain names here in issue. Were it necessary to investigate whether there was an exceptional case for admitting a re-filed complaint, I would hold that there was. For reasons which I shall reach when dealing with the substance of the Complaint, there is now further evidence against the Respondent which appears credible and material and which could not reasonably have been investigated by the Complainants until after they had seen the response in the earlier Case (see para. 6(2) below).
(5) The Respondent has sought to substantiate his objection to admitting this Complaint by two more general submissions. First, he claims that an article by Professor Michael Geist of the Faculty of Law, University of Ottawa, suggests that there is systemic unfairness in the ICANN UDNDRP. The article, which forms an Exhibit to the Response, reports a survey of the results of cases deploying three-member and one-member panels. Because a higher proportion of one-member decisions are in favour of complainants, it is suggested that the very system is unduly favourable to them. Since, however, the study is quantitative in nature, and does not examine the evidence or reasons given in particular cases, any conclusion to be drawn from it must be tentative. The article may be of interest in the context of reshaping the Policy. It is difficult to see that it should have any effect on a panelist who is striving to apply the existing policy in a manner which maintains a fair balance between the parties.
(6) Secondly, the Respondent objects to a reference concerning Mr. Talal Abu-Ghazaleh's connection with the World Intellectual Property Organization. His curriculum vitae is attached to the Complaint in order to demonstrate that he is the "father figure" of the Complainant companies and to suggest how substantial is the business reputation of the enterprises which he has founded. In the list of "Selected Board Memberships" is included: "Founding Member, Industry Advisory Commission at the World Intellectual Property Organization (WIPO), Geneva, 1999-present". To the Respondent this suggests that "certain influential individuals can obtain preferential treatment because of their influence". As already stated, I have declared my impartiality and independence in this case. I would at this point add the following. If Mr. Abu-Ghazaleh's reference to his WIPO appointment were to have been intended to exert any effect on the appointed panelist, it would have been ill-advised. Certainly I would treat any attempt to "pull rank" as a reason for examining the claim being made with special concern. In this instance, I can state that I do not personally serve on any WIPO body. Not moving in Middle Eastern business circles, I have never met Mr. Abu-Ghazaleh and had never even heard his name or that of any of the Complainants before receiving the request to act as panelist in the present case. I know of no basis on which it could possibly be suggested that I would be biased in the Complainants' favour.
B. The Substance of the Complaint
(1) In accordance with the UDNDRP, Para. 4, the Complainants are required to show: (i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark of their own; (ii) that the Respondent has no right or legitimate interest in the domain names; and (iii) that the names were registered and are being used in bad faith. From the Complainants' evidence it is clear that their businesses are considerable in size and generate very considerable goodwill which their clients and others associate with them as a group. The question of prime importance is in consequence: does the Respondent carry on any genuine business under the names for which he has registered the domain names in dispute? Or is the evidence which he now produces of business activity merely a cover for deliberately obtaining domain names consisting of the Complainants' well-known business names in bad faith?
(2) In the earlier proceedings, the Respondent asserted that he did have such a business. In the absence of any contradictory evidence, the Panelist found this to be so. The present Complainants have in the interim made substantial efforts to investigate the question and have produced the negative information that no record of any such business can be found in appropriate databases for California. Since the Respondent claims that the business is being carried on in a fictitious name (translated from the Arabic, he asserts that it means "the hill of the deer's father"), it ought to be the subject of a filed Statement in accordance with the California Business and Professional Code, para. 17910; yet no such statement has been traced. Since none of the domain names has been used to establish a website or other digital address, no avenue exists through them to discover anything about the alleged business activity.
(3) By way of response to this information, the Respondent has filed five unattested statements (labeled affidavits) from individuals, namely, Rania Azrai, Celina Gonzalez, Maria Kdoury, Aliss Latach and Juan Mendoza. Each states that he or she has received pet grooming services from the Respondent's business known as Tal Alabu Ghazaleh from various dates: February 2000, end of 1999, around September 1999, about two years ago and end of 1999. No address is given for any of these people. No other information is provided about the business: no indication of whether there are other clients, what charges are made, what business plan is being pursued, what likelihood there is that the domain names will be put to use for the business.
(4) The most that has been added is a brief unattested statement from the Respondent's business associate, Anis Wakim and a Notarised Affidavit from the Respondent himself which seem to confirm that the business in washing pets, clipping their nails and grooming them has been in operation since August 1, 1999. I find myself obliged to conclude that the statements from clients are not a representative sample from a functioning business which has any substantial existence; rather they appear to be the most that the Respondent can muster. If there was any substantial trade being carried on, he ought to have been able to supply a more convincing account of its extent by way of counter to the negative searches conducted by the Complainants. The Respondent has sought to place reliance on his registered Californian trademark. That registration did not take place until after the earlier proceedings had been commenced; in any case registration is no proof that business is actually being conducted.
(5) I am driven to the conclusion that the Respondent set up a so-called grooming service eleven days before registering (initially in Mr. Debbas' name) the first of the domain names in dispute in order primarily to screen his adoption of the name of a well-known Middle East accounting firm.
(6) This finding affects my view of each element in the case. As to confusing similarity between the domain names and the Complainant firms' names (and related marks), the essential words are identical and there is accordingly an inherent likelihood that confusion between them may result. The Panelist in the earlier case, accepting that the Respondent ran a grooming business, found no likelihood of confusion by comparing the businesses in which they would be used. While it may be appropriate to take some account of actual business use of a domain name in determining this issue where there is such use (I would not go so far to agree that this is the only question to be addressed in a case of that type), it cannot be relevant to do so where there is no real business being conducted. In this case, the general test applies. Since a domain name is not confined to particular uses (nor indeed is it required to be used at all), what must be compared are potential uses to which it might be put in comparison with the marks, registered or protected because of their use, on which a complainant relies. On that basis I have no doubt that a likelihood of confusion arises.
(7) As to the question of the Respondent's own right or legitimate interest: if the alleged business did not exist when the first domain name was registered and has not since come into real operation, no basis for such a claim can exist. And as to the obverse question, the Respondent's conduct throughout must be regarded as undertaken in bad faith. It is very difficult to credit the claim that the original choice of name was in order to call the business "The Hill of the Deer's Father" (in Arabic) rather than to appropriate the name of the founding father of the Complainants. The previous panelist did not believe the respondents' assertion on this. He noted that "Talal abughazaleh" was an unlikely Arabic version of that expression, a view confirmed in an expert opinion now submitted by the Complainants. In any case, the fact that, after the first complaints, the Respondent proceeded to obtain three more domains derived from that name and from the separate "Aldarauditbrueau" makes his claim wholly unsustainable.
For these reasons, the Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4, that the domain names <talalabughazaleh.com>, <talalbaughazaleh.org>, <talalabughazaleh.net> and <aldrauditbureau.com> should be transferred forthwith to the Complainants or such of them as they may nominate.
William R. Cornish
Dated: September 13, 2001