WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co and Abu Ghazaleh Intellectual Property
Case No. DPH2001-0002
1. The Parties
The Complainants are three Jordanian corporations with offices in Amman, Jordan (viz Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co and Abu Ghazaleh Intellectual Property). The Complainants are represented by White & Case LLP, New York, NY, United States of America. The Complainants assert sufficient common interest in the domain names at issue such as to make their joinder as Complainants permissible. Talal Abu-Ghazaleh & Co and Abu Ghazaleh Intellectual Property are member firms of the Complainant Talal Abu-Ghazaleh International and each Complainant is owned by Talal Abu-Ghazaleh.
The Respondent is Mr. Anis Wakim of Costa Mesa, CA, United States of America. The Respondent has filed a Response and represents himself.
2. The Domain Name and Registrar
The domain names at issue are <talalabughazaleh.tv> and <talabughazaleh.com.ph>. The first domain name is registered with The .TV Corporation and the second with dotph.Inc.
3. Procedural History
The Complaint submitted by the Complainants was received on November 30, 2001, (electronic version) and December 4, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On December 11, 2001, a request for Registrar verification was transmitted by the WIPO Center to the respective Registrars, requesting each of them to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue was registered with it.
Confirm that the person identified as the Respondent was the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the status of the domain name.
By email dated December 15, 2001 dotph.Inc and on December 18, 2001, the .TV Corporation (via Register.com) advised the WIPO Center as follows in respect of each disputed domain name:
It had received a copy of the Complaint from the Complainant.
It is the Registrar of the relevant domain name registration.
The Respondent is shown as the "current registrant" of the domain name.
The Respondent is also the administrative, technical and billing contact.
The UDRP Policy is in effect.
The domain name registrations are current.
Each Registrar has currently incorporated in its registration agreements the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrars that the domain names in question are current indicates that the Respondent has not requested that either domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with either Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on December 20, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to each Registrar and to ICANN.
The Complainant elected to have its Complaint resolved by a sole Panelist; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days of the format notification of the commencement of these proceedings. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on January 8, 2002 (email) and January 31, 2002 (hard copy).
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Panelist in this case.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On January 29, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by February 12, 2002. However, the decision was been delayed because the Complainantís lawyer initially complained that the Respondent had not forwarded copies of the Exhibits to the Response. He asked the Panel to rule that these documents be sent. On February 9, 2002, Respondent advised the WIPO Center and the Complainantís lawyer of the forwarding details of these documents. The Panel therefore set a return date of February 15, 2002 for the decision.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
Complainants are members of a group of professional service firms operating in the Arab world. The majority shareholder of each is Mr. Talal Abu-Ghazaleh, who has been a public accountant, management consultant and intellectual property expert since 1960.
Complainant Talal Abu-Ghazaleh International ("TAGI") was established over 28 years ago and is the umbrella corporation under which Mr. Abu-Ghazalehís other corporations are member firms. TAGI operates out of offices in every major city in the Arab world, with liaison offices in Europe and North America.
Complainant Talal Abu-Ghazaleh & Co. ("TAGCO"), a TAGI member firm, claims to be the Arab worldís largest provider of professional services, with a staff of over 600 professionals working out of 30 offices who advise businesses on accounting, quality assurance and project management.
Complainant Abu-Ghazaleh Intellectual Property ("AGIP") was established in 1972 to establish and promote the protection of intellectual property rights throughout the Arab world. It has 20 branch offices in addition to its regional office in Amman, Jordan. It has played a significant role in the introduction of new intellectual property laws throughout the Arab world.
TAGI, TAGCO and AGIP own numerous trademark registrations for the marks TALAL ABU-GHAZALEH & CO., ABU-GHAZALEH INTELLECTUAL PROPERTY, and ABU-GHAZALEH CONSULTING in 12 countries in the Middle East. The service mark TALAL ABU GHAZALEH is known throughout the Arab world and beyond.
Complainants also own numerous trade name registrations in many countries (including the United States) for marks containing the distinctive designation TALAL ABU GHAZALEH, including TALAL ABU GHAZALEH & CO., and ABU GHAZALEH INTELLECTUAL PROPERTY.
On December 24, 2000, a WIPO Panelist in Decision D2000-1479 refused to order the transfer of the domain name <talalabughazaleh.com> to the then Complainant Mr. Talal Abu-Ghazaleh. The Respondents to that administrative proceeding were Tony Dabbas and Fadi Mahassel.
The Panelist in D2000-1479 decided in summary:
(a) The Complainant lacked standing to bring the Complaint.
(b) There was no confusion proved between the similarly worded trademarks and domain names since the categories of services, IP and accounting by Complainant and pet-grooming by Respondent, were not similar.
(c) While the choice of domain name was probably inspired by the Complainantís name, given that no likelihood of confusion had been established, that choice could not of itself constitute bad faith.
(d) On the evidence presented, Mr. Mahassel had operated a pet-grooming business since August 1999 and had a right or legitimate interest in the domain name.
Respondent appears to accept that Mr. Mahassel was associated with himself in the use of disputed domain names in two previous WIPO cases (Nos. D2000-1479 and D2001-0907).
On September 27, 2001, Respondent registered the domain name <talalabughazaleh.tv>. On September 13, 2001, the Respondentís alleged business partner, Mr. Fadi Mahassel, was unsuccessful in defending a WIPO proceeding (D2001-0907) brought by three of the Complainants in this case (and Aldar Audit Bureau, which is not a party in this case) concerning the domain names <talalabughazaleh.com>, <talalabughazaleh.org>, <talalabughazaleh.net> and <aldarauditbureau.com>. These domain names had been registered in the name of Mr. Mahassel. The <aldarauditbureau.com> domain name was identical to the name of another TAGI member firm, Aldar Audit Bureau.
In decision D2001-0907 the Panel determined:
(a) The Complainants were not precluded from pursuing the Complainant because of the previous Panel decision.
(b) Respondentís and Mr. Mahasselís claim of running a pet grooming service under the name Talal Abu Ghazaleh was without merit: the alleged pet grooming business service was merely a screen for adopting the name of Complainantís well-known Middle East professional firm.
(c) The disputed domain names were confusingly similar to the Complainantsí firmsí names: "the essential words are identical".
(d) Respondent and Mr. Mahassel had no right or legitimate interest in the domain names as the alleged grooming business did not exist when the first domain name was registered. Nor had it since coming into operation: their conduct throughout was in bad faith. The alleged business was a screen for adopting the Complainantís name.
(e) The domain names <talalabughazaleh.com>, <talalabughazaleh.org>, <talalabughazaleh.net> and <aldarauditbureau.com> should be transferred to the Complainants.
On October 15, 2001, Respondent sent an email to Luay T. Abu-Ghazaleh, identifying his email address as <email@example.com>.
The websites located at <talalabughazaleh.tv> and <talalabughazaleh.com.ph> have the purported goal to "prevent animals killing and abusiveness".
Respondent has a service mark registered on November 17, 2000 in the State of California, U.S.A. (No. 054179) for Tal Alabu Ghazaleh. He filed a Fictitious Business Name Statement for the same name in the official records of Orange County, California on November 14, 2000.
Respondentís website claims that the translation of the words in the domain name are "The Hill of the Deerís Father". No evidence from an Arabic/English translator was offered. The website at <www.talalabughazaleh.tv> states that Tal Alabu Ghazaleh is a humane pet-grooming business in Southern California. The website states that it is "under construction, and will be updated continuously". It links to sites about animal rescue and cognate sites.
On October 15, 2001, Respondent sent an email to Luay T. Abu-Ghazaleh asking whether Mr. Abu-Ghazaleh would be interested in selling to Respondent the names which the D2001-0907 Panel had ordered be transferred. The Respondent gave the email address of <firstname.lastname@example.org>, which domain name he had registered on September 27, 2001.
5. Partiesí Contentions
The following is taken from the Complaint.
The disputed domain names <talalabughazaleh.tv> and <talalabughazaleh.com.ph> are confusingly similar to the Complainantsí trademarks TALAL ABU-GHAZALEH INTERNATIONAL and TALAL ABU-GHAZALEH & CO, as the prior panelist so held in WIPO Case No.D2001-0907, of September 13, 2001. The domain names are virtually identical and contain the distinctive core element of Complainantsí trademarks: TALAL ABU-GHAZALEH.
To demonstrate a legitimate interest in a domain name, Respondent may show that (i) before any notice to it of the dispute, the domain names were used in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the domain names; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, Respondent cannot provide any basis on which to found a legitimate interest in the domain names.
The domain names <talalabughazaleh.tv> and <talalabughazaleh.com.ph> were not used by Respondent in connection with a bona fide offering of goods and services, prior to any notice of this dispute. As the previous WIPO panelist held, Respondent does not operate a legitimate pet grooming service. Respondent has not Ė and cannot Ė offer any credible evidence that such a business ever existed.
Furthermore, Respondent registered the disputed domain name <talalabughazaleh.tv> days after the September 13, 2001 administrative panel decision in which he and his colleague, Mr. Mahassel, were unsuccessful in the UDRP proceeding brought by Complainants. Thus, Respondent clearly had knowledge that such a similar domain name would infringe upon Complainantsí rights. Respondentís actions are blatant examples of bad faith and clear evidence that Respondent was not ever using <talalabughazaleh.tv> or <talalabughazaleh.com.ph> in connection with any bona fide offering of goods and services.
Respondent has never alleged that he has been commonly known by Talal Alabu Ghazaleh.
Likewise, Respondent cannot show a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly to divert consumers or to tarnish the Complainantís marks. Respondent seeks to divert consumers and tarnish Complainantsí numerous marks. In light of the Respondentís pattern of bad faith, the September 13, 2001 decision and Respondentís registration of <talalabughazaleh.tv>, days after that decision, Respondent is overtly trying to damage Complainantsí business reputation.
Respondentís bad faith is manifest. Respondent registered the <talalabughazaleh.tv> domain name only days after receiving the notice from WIPO that the domain names registered by his business partner, including <talalabughazaleh.com>, .net> and .org> must be transferred to Complainants. Respondent has embarked on a continuing campaign to interfere with the legitimate trademark rights of the Complainants. The registrations of <talalabughazaleh.tv> and <talalabughazaleh.com.ph> are the latest acts in a long run of "mischievous theatrics", intended to harm and stain Complainantsí marks. Respondentís repeated smear tactics are compelling evidence of bad faith.
Respondent registered and is using the domain names in bad faith to prevent Complainants from reflecting their well-known marks in corresponding domain names. Respondent and Mr. Mahassel have engaged in a prolonged pattern of such conduct. Further, as held in the earlier decision of September 13, 2001, the words "Talal Alabu Ghazaleh" bear no relation to Respondent or an alleged "pet grooming" service. Respondentís registration of this name is explicable only as a blatant effort to prevent Complainants from registering another one of their well-known trademarks as a domain name. Respondentís repeated targeting of the Complainantsí trademarks can only be seen as a direct attack on Complainantsí goodwill.
Respondent commences his Response with a plea for independence and impartiality from the Panel. He claimed that Mr. Talal Abu-Ghazaleh was a founding member of WIPOís Industry Advisory Commission. He implies that the learned Panelist in D2001-0907 was unintentionally influenced by Mr. Abu-Ghazalehís reputation and standing as "father figure/founding father" of a large professional organization. This Panelist would be greatly surprised if any such implication against a distinguished WIPO Panelist were correct. In his decision, the learned Panelist went out of his way to emphasise his impartiality and independence.
The Respondent should be aware that until receipt of the file for this case, this present Panel in the Antipodes had never heard of Mr. Abu-Ghazaleh and/or his organization and/or any of the Complainants. This Complaint will be determined independently and impartially by the Panel on its merits in accordance with the Policy and Rules.
Respondentís Submission on Merits
The following is taken from the Response.
(a) The trademarks have a dash and other words attached to the name; where Respondentís domain names and service marks do not.
(b) Respondent registered the domain names after [the Panelist] "unjustly rules in favour of the Complainant in Case No D2001-0907" to "keep my humane business up and running and in order to reach to the community and deliver my message". Respondent launched his "humane pet grooming site" on September 27, 2001.
(c) Mr. Abu-Ghazaleh first registered <tagi.com> on July 17, 1997 and <abu-ahazaleh.com> on April 8, 1999. On August 11, 1999, Respondentís associate, Mr. Mahassel, procured the registration of <talalabughazaleh.com>. Another Panelist in WIPO D2000-1479 found in favour of Mr. Mahassel on Mr. Talal Abu-Ghazalehís Complaint over <talabughazaleh.com>.
(d) The present Complaint is brought in bad faith in an attempt to harass the domain name holder and is an attempt at reverse domain name hijacking.
(e) The Panelist in D2000-1479 found lack of confusion based on the services offered on Mr. Mahasselís website in 1999.
(f) The Panelist in D2001-0907 was wrong to hold that Respondent demonstrated no evidence of a genuine business. Since then, Respondentís website explains his non-profit humane business. Respondent by reason of his registered service mark and Fictitious Business Name Statement shows that he has used the domain name in connection with a bona fide offering of services and/or that he is using the name for a legitimate non-commercial or fair use without intent for commercial gain. [The Respondent offers further criticisms of the decision in D2001-0907, which are not relevant, because this case falls to be decided on the papers before the present Panelist.]
(g) After Mr. Mahassel was successful in the first case [i.e. in Case No. D2000-1479], he received an offer on behalf of Complainants to buy the domain name which was the subject of that case. He declined to sell, which is proof of Respondentís good faith.
(h) Respondent has launched his website, which shows that he is engaged in a humane, non-profit cause.
Respondent did not submit any evidence to this Panel about the extent of his pet-grooming business.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no rights or legitimate interests in respect of the domain names; and
- That the domain names have been registered and are being used in bad faith.
In the view of the Panel, the disputed domain names are confusingly similar to the Complainantís marks. The Panel respectfully adopts the views of the Panelist in D2001-0907 and the authorities cited by the Complainant in this regard. The lack of hyphens in domain names does not distinguish them from the marks with hyphens (See WIPO Case Nos. D2001-1250 and D2000-1197). Established trademark law shows words like Ď& Coí and ĎInternationalí have little significance. The first criterion is proved. This Panel disagrees with the Panelist in D2000-1479 in this respect. It matters not under the Policy whether the mark is for a specified classification which may be different from a classification pertaining to the alleged business of a Respondent. The Policy speaks only of a mark "Ö in which the complainant has rights".
As to the second criterion, Respondent must advance evidence, in response to that presented by Complainant, to demonstrate rights or legitimate interests in the domain names. Paragraph 4(c) of the Policy sets out examples which, if found by the Panel to be proved, demonstrate a Respondentís rights or legitimate interests. One of those examples, under paragraph 4(c)(i), provides that a Respondent may demonstrate rights or legitimate interests if Ďbefore notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [was] in connection with a bona fide offering of goods or services;í. The Respondent appears to assert that he made, and continues to make, such a use of the domain names.
The Panelís enquiry relates to the Respondentís activities Ďbefore any notice to you of the disputeí. That enquiry must surely relate to the time when the Respondent (or his associate Mr. Mahassel) became aware that the Complainants or their controlling officer Mr. Talal Abu-Ghazaleh were concerned about the use of the Complainantsí marks in a domain name, whether it be a TLD or a domain name with a country suffix. This date would have to be June 11, 2000 when a Mr. Dabbas was first contacted about the use of the disputed domain name with a .com suffix, or July 7, 2000 when Mr. Dabbas transferred the .com name to Mr. Mahassel. (See WIPO Case No. D2001-0907.)
It seems to the Panel that a Respondent should not be able to postpone the relevant date under Paragraph 4(c)(i) of the Policy merely by shifting to another domain name registrar and/or registering the same name but with a different suffix. Having been bumped off the .com, .net and .org domain names in dispute in WIPO Case No. D2001-0907, Respondent then registered the same names with the country suffixes of Tuvalu and the Philippines.
Respondent claims that he registered a service mark and a Fictitious Business Name in California in November 2000. This was done well after he had known that Complainants disputed his right to use their marks in a domain name. Accordingly, it is difficult to see how Paragraph 4(c)(i) could apply because a Respondent must show that the domain name in issue was used before any notice of dispute.
It is not clear from the Response when the alleged pet-grooming business started. The Respondent has not in this present case offered any proof that he operates a genuine pet-grooming business. Profit and loss accounts, balance sheets, invoices, letterheads and the like would have been helpful items of proof.
Sufficient evidence simply is not provided here by the Respondent. Like the learned Panelist in WIPO Case No.D2001-0907, I consider an Arabic name for a pet-grooming service in California is not an obvious business choice and that the choice of the name was inspired by Mr. Talal Abu-Ghazaleh. Normally one would expect a Respondent to demonstrate some evidence of a legitimate business other than a mere assertion.
Respondentís repeated forays against Complainants show that he is no innocent trader who happens to trade under the same name as that of a trademark registered in another part of the world and who has been operating a legitimate business in another country under that name. The overwhelming inference is that Respondent knows exactly what marks the Complainants own. He seems to have some animus against Mr. Talal Abu-Ghazaleh. His apparently unremitting campaign against Mr. Talal Abu-Ghazaleh (of which this case is the latest flowering) is ample proof of bad faith registration and continuing bad faith use of domain names which replicate the trademarks owned by Mr. Talal Abu-Ghazaleh through the present Complainants. It is difficult to escape the inference gleaned from a consideration of the history of Respondentís activities, that he is really using the domain names to prevent the Complainants from reflecting their marks in them.
The offer by Complainantís representative to buy the name involved in D2000-1479 was understandable given that that complaint had been unsuccessful. The Response about keeping the name for the pet-grooming business is capable also of the inference that the name was being retained to embarrass Mr. Talal Abu-Ghazaleh. However, the communication from Respondent shortly after the decision in D2001-0907 was an indication of his ongoing campaign in that the Respondent was advising that he had registered the domain names yet again but with a different suffix.
The Respondentís claim of reverse domain name hijacking is frivolous in the circumstances and should be dismissed out-of-hand.
For the foregoing reasons, the Panel decides that:
(a) The domain names are confusingly similar to the Complainantís marks.
(b) The Respondent has no rights or legitimate interests in the domain names.
(c) The domain names have been registered and are being used in bad faith.
(d) The Respondentís claim for a declaration against complainants of reverse domain name hijacking is dismissed.
Accordingly, the Panel requires that the domain names <talalabughazaleh.tv> and <talalabughazaleh.com.ph> be transferred to the Complainants.
Hon. Sir Ian Barker QC
Dated: February 14, 2002