WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fortune Promoseven v. Wael Salah and Design Lab

Case No. D2002-0379

 

1. The Parties

The Complainant in this administrative proceeding is Fortune Promoseven, Dubai United Arab Emirates. The Respondents in this administrative proceeding are Wael Salah, PO Box 30908, Dubai, AE 00001 United Arab Emirates, and Design Lab, Manama, Bahrain.

 

2. The Domain Names and Registrars

The disputed domain names are<fp7.net> and <promoseven.net>. The Registrars of the subject domain names are respectively CORE Internet Council of Registrars, World Trade Center II, 29 route de Pre-Bois, CH-1215 Geneva, Switzerland, and Network Solutions, Inc. of 21355 Ridgetop Circle Dulles, VA 20160, United States of America. <epromoseven.net> was listed by the Complainant as a disputed domain name in the beginning of its Complaint, but subsequently the Complainant withdrew reference to that domain name.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), approved by ICANN on October 24, 1999 and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

By registering the subject domain names with the Registrars, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.

The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 23, 2002, by email and on April 26, 2002, by hardcopy. Final Amendments to the Complaint were received on May 16, 26 and May 30, 2002. On June 3, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Respondents filed a Response on July 1, 2002.

The Administrative Panel consisting of three members was appointed on August 7, 2002, by the Center.

The Administrative Panel requested translations of certain attachments to the Complaint. These were provided and have been considered by the Administrative Panel. In addition, the Complainant provided to the Administrative Panel a copy of a July 15, 2002, e-mail that the Administrative Panel decided to consider. The Respondents were afforded an opportunity to comment, but did not so.

The time for the delivery of the decision was extended appropriately.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

 

4. Factual Background

The following information is derived from the Complainant

The subject domain name <fp7.net> was registered on November 7, 2001.

The Complainant relies on the WIPO ruling Fortune Promoseven v IQ, WIPO Case No. D2001-1370 dated March 19, 2002, which concerned the use of the name <fp7.com>. The ruling by the Administrative Panel in that case, against the same Respondent, held that the domain name was confusingly similar to the trade mark of the Complainant and was registered and used in bad faith by the Respondent.

The same facts apply to the subject domain name <fp7.net>.

Up to March 26, 2002, as verified by familyNet in the United States, the <fp7.net> site was being used to publish spurious, libellous and defamatory information about the Complainant.

Through its lawyer in the United States, the Complainant asked FamilyNet to take the site down due to the nature of the information on it and FamilyNet agreed to do so.

The Respondent was never a partner of the Complainant. He has done work as a supplier as was agreed in WIPO Case No. D2001-1370 and he worked through his company with the Complainantís office in Bahrain.

The subject domain name <promoseven.net> was registered on May 11, 1998.

The Complainant is a company in the middle east with offices in the middle east and North Africa as verified in WIPO Case No. D2001-1370 in which it was stated at page 5: "Öthere is no dispute that Fortune Promoseven is the complainantís name and that it is a very well known name in the middle east".

The personal Respondent worked through his company, the corporate Respondent, with the complainant's office in Bahrain. He knew of the Complainant as early as 1998. The personal Respondent had no right to register the subject domain name <promoseven.net> in his own name because he did not have an ownership interest in the Complainant.

The Complainant has been registered in the United Arab Emirates from 1980, in Bahrain and has used the name since1982. This was long before the Respondent worked as a supplier to the Complainant.

The Complainant's web site, "www.promoseven.com", which was originally created by Donal Kilalea and ordered in 1997, but not through the personal Respondent. A local company, Victro Microsystem in Dubai was involved. It had a yearly contract with the Complainant and originally registered the name promoseven.com on its behalf.

The domain name <promoseven.ws> was registerd by Donal Kilalea. <promoseven.biz> and <promoseven.info> were registered by Mr. Rene Muller. All registrations were under the instructions of the Complainant.

The following information is derived from the Response:

The media or staff within the Complainant do not refer to the Complainant as fp7 and they do not use the name fp7 in their operation.

There is no evidence of any trademark for the name fp7 registered or submitted by the Complainant. This name is never displayed on stationery or billing or recorded in any of the countries in which it operates and is not mentioned on the Complainantís web site "http://www.promoseven.com" and "http://www.promoseven.com"/offices.asp or "http://www.promoseven.com/info.asp". The complainant is not known in the Middle East as fp7.

The Complainant also uses the names Afkar Promoseven and Alsiham Promoseven. The Complainant has no right or trade mark to the name <fp7.net>.

The only registration that exist for the name fp7 is for the NCTM Southern Railway 6133 Diesel-Electric Locomotive, Model fp7; Builder: Electro-Motive Division, General Motors; Year Built: 1950; "http://www.ci.salisbury.nc.us/nctrans/cars/6133info.htm", "http://crcyc.railfan.net/locos/emd/fp7/fp7.html".

The "train engine" fp7 model of engines is so popular, admired and liked by so many people that t here are over 800 hundred websites dedicated to it. Websites include:

"http://engineshop.tripod.com/EMDF7.htm";
"http://www.trainstationohio.com/limited.htm";
"http://www1.railpage.org.au/ausrail/97june/0202.html";
"http://members.fortunecity.com/trnng/gm-emd/usa/rifp7402.htm";
"http://vis-www.cs.umass.edu/~heller/cgi-bin/heller.cgi/Workshop/fl9.tcl?Frame=Main";
"http://www.alshobby.com/engine.htm".

The Complainant refers to the administrative proceedings for the dispute related to <fp7.com>. This matter now is in the hands of the United States District Court, Western District of Washington, at Seattle, United States of America.

The website "www.fp7.net" never contained any information about the Complainant or anyone else. This domain is being developed with live cams to transmit information and statistics on the boat "Fearless Pirates 7". There are seven partners on board including the personal Respondent. The development of the site "www.fp7.net" is very complicated, underway and should be completed by October 2002.

The subject domain name was registered as part of a 3-letter domain collection and later the personal Respondent decided to put it to good use. The website to which the subject domain name does not and never has contained any information about the Complainant and the site will be used in a completely different function not in any way related to the Complainantís business.

The Complainant did not file for the domain name <fp7.info>, which was registered in October 2001, by Michael Remes.

The subject domain name <promoseven.net> is registered to the Respondent DesignLab.

The personal Respondent was a partner in the Complainant in the State of Bahrain under registration No. 2001001332.

The personal Respondent is a partner with the Respondent DesignLab, which is the registered owner of the subject domain name <promoseven.net>. The Complainant and the personal Respondent owned the Respondent DesignLab. He was the majority stockholder. The Respondent DesignLab registered the subject domain name <promoseven.net> for the purpose of developing a website for the Complainant. The Complainant did not pay for the development of the site.

The Complainant through connections with the Media, the Chief of Police in Bahrain, Dubai and the Minister of Information in Bahrain and after a dispute over financial matters, removed and stole equipment and other belongings worth in excess of US$560,000 from the companies in which the personal Respondent was a partner and began this claim.

The personal Respondent remains a partner in the Respondent DesignLab and in the Complainant. Although, he has been told by a reliable source that he was ousted from the companies, the personal Respondent considers that action to have been illegal, fraudulent and not acceptable.

The subject domain name <promoseven.net> has been registered by the Respondents for the above stated purpose for over 4 years.

The Complainantís attorney contacted the personal Respondentís attorney and went through the motions of an attempted settlement, but after several attempts to remedy the situation, the Complainant never replied to the initiated settlement. The personal Respondent says that the Complainant was using its attorney as a delay tactic.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its registration and use of "promoseven" and on a previous domain name dispute decision between the parties that confirmed its rights to fp7. It also asserts that it is known by both names and furnishes copies of material that support this contention.

The Complainant denies that the Respondents have any ownership interest in the Complainant and state that the Respondents are not known by the subject domain names.

Relying on the previous domain name dispute decision and on defamatory comments by the personal Respondent associated with the subject domain names, the Complainant contends that the subject domain names were registered and are being used in bad faith.

B. Respondent

The Respondents contends that the Complainant has no trademark rights to "fp7" and is not know by it. Reference is made to the use of this designation by others.

It is asserted that the Respondents have a legitimate interest in "fp7" as descriptive of a sailboat in which the personal Respondent has an interest.

Bad faith is denied and reference is made to a history of commercial dealings between the parties, including the registration and use of the subject domain name <promoseven.net>.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the complainant to prove that:

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

(ii) the respondent has no legitimate interest in respect of the domain name;

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The resolution of this dispute takes place in the context of a consideration of the requirements of Paragraph 4(a) of the Policy.

The Complainant relies on the decision of the Administrative Panel in Fortune Promoseven v IQ, WIPO Case No. D2001-1370 dated March 19, 2002, which concerned the use of the name <fp7.com>. and which involved the same parties. It is neither binding nor controlling on this Administrative Panel and apparently is under review by the United States' court, but the Administrative Panel takes it into account, affording to the decision some weight in the overall context of the information provided to it.

A. Identical or Confusingly Similar

A domain name dispute usually is not a process for the resolution of contested issues of intellectual property rights. These usually are dealt with more appropriately in proceedings that are able to review and weigh evidence and to make findings of credibility. A domain name dispute by design is a summary proceeding based on the assertions of the parties and selected documents.

It is clear from the material filed by the parties that the Complainant has interests in and is known by both promoseven and fp7. In addition to the registration information and the findings of fact made by the Administrative panel in Fortune Promoseven v IQ, which concerned the use of the name <fp7.com>., newspaper clippings supplied by the Complainant confirm that it is known by both promoseven and fp7.

The subject domain names differ from the Complainant's rights only by the addition of .net, which is immaterial.

The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(i).

B. Respondents Legitimate Interest

Concerning the subject domain name <fp7.net>, the Complainant relies on the Fortune Promoseven v IQ decision, which the Respondents note is under court review.

The Respondents assert that they have a legitimate interest in the subject domain name <fp7.net> because it is from a collection of three-letter names and describes a sailboat in which the personal Respondent has an interest. A photograph of the vessel was provided to the Administrative Panel. Prima facie this suggests a legitimate interest.

The Respondents clearly knew of the Complainant's use of fp7 at the time the subject domain name was registered. Its registration and the registration of the domain name <fp7.com> appear to have taken place in the context of an ongoing commercial dispute among the parties. In the previous case, the personal Respondent selected the name "Fun Party of Seven" to justify the name.

In a July 15, 2002, e-mail, it appears that the personal Respondent accused the Complainant of fraud and suggests that readers go to a number of websites that use "promoseven" and "fp7". While use of a domain name for criticism can be legitimate, in this case, the activity appears to be part of a longstanding and ongoing commercial dispute. The July 15, 2002, e-mail is of the same ilk as earlier somewhat threatening communications from the Respondents to the Complainant.

The Respondents contend that they have a legitimate interest in the subject domain name <promoseven.net> because they were in a partnership with the Complainant and the registration was part of a commercial relationship between the parties. The Complainant disputes these contentions.

The Administrative Panel is not in a position to resolve the contested assertions of the parties and looks to the objective surrounding circumstances.

The Respondents are not known as promoseven. The Complainant clearly is. The Respondents certainly knew of the Complainant's rights to and use of promoseven when the subject domain name was registered. It is being used to attack the Complainant.

Even if at the time of registration the Respondents had a legitimate reason for registering the subject domain name, it was to register it for the Complainant and in the name of the Complainant. The Administrative Panel is satisfied that at no time did the Respondents have any right or legitimate interest in respect of the subject domain name such as to justify registration of it in their own name.

The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(ii).

C. Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name that is identical or confusingly similar to the rights of another, does not lead automatically to a conclusion of bad faith, but the facts that lead to the finding may be relevant to the bad faith issue.

Concerning the subject domain name <fp7.net>, the Complainant again relies on the Fortune Promoseven v IQ decision, which the Respondents note is under court review.

Apart from noting that the case is under review, the Respondents do not address any of the factual conclusions presented by it. The fact that another administrative panel has found bad faith in the context of the abbreviation of another name to justify the use of fp7 is not conclusive of bad faith in this case, but it raises a concern. Denial of the Complainant's use of fp7 in light of the information provided by the Complainant is suspicious, as is the use of fp7 to attack the Complainant as fraudulent.

The subject domain name <fp7.net> was registered long after the commercial relationship between the parties appears to have foundered. The Complainant's use of fp7 must have been well-known to the Respondents.

The <promoseven.net> subject domain name was registered in 1998, but as noted previously, even if it were with the concurrence of the Complainant at that time, and the Complainant denies this, the registration was for the Complainant. Once the parties were in dispute it was apparent that continued use was not sanctioned, if any use by the Respondents ever was. Passive use of the subject domain name would raise the potential spectre of bad faith. Actual use of promoseven to attack the Complainant reinforces that concern.

Registration in oneís own name of anotherís trade mark without a descriptive qualification as part of a domain name, when one has no authority to do so coupled with the use of that domain name to attack the person whose trade mark one has taken, generally is considered to be bad faith registration and use within the meaning of Paragraph 4(a)(iii) of the Policy, even if those circumstances do not fit precisely within the non-exhaustive list of examples set out in Paragraph 4(b) of the Policy.

The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the majority of the Administrative Panel concludes that the Complainant has established its complaint. It asked for the transfer of the subject domain names to it. The Administrative Panel so orders.

 


 

Edward C. Chiasson, Q.C.
Presiding Panelist

Tony Willoughby
Panelist

Dated: September 16 , 2002

 


DISSENTING OPINION

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a mandatory administrative proceeding in which the Complainant must prove three elements:

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

The first element is the evidence of trademark rights in the name of the complainant, i.e. in the name of Fortune Promoseven.

The Complainant asks for the transfer of <fp7.net> and <promoseven.net> which are respectively registered in the name of Wael Salah, located in Bahrain and of DesinLab located in Dubai in the whois data base.

Regarding <fp7.net>, the Complainant does not give evidence of any trademark right.

Regarding <promoseven.net> the Complainant do not either give evidence of trademark rights.

The enclosures concerning the names FP7 and FORTUNE PROMOSEVEN are:

- the first page of an incorporation agreement concerning the creation of a company called FP7 Mc Cann in Morocco in 1989;

- two documents written in Arabic language and their translation;

- press articles concerning the Complainant.

The translated documents are, regarding the translations, the "license" of a trading name FORTUNE PROMOSEVEN (LLC) which expired on September 05, 1999, and another "license" referring to a company name FORTUNE PROMOSEVEN registered in 1982.

The Respondent contests the trademark rights on the name FP7.

The Complainant has to give evidence of its trademark rights, which could be rights on a registered trademark or on a common law trademark.

There is no evidence of any registered trademark and the Complainant does not make any development on common law trademark rights.

Such evidence can not be given by asserting that its name is very well known in Middle East.

The UDRP does not actually make it possible to ask for a transfer because of prior rights other than trademark rights.

Accordingly, this proceeding supposes that the intellectual property rights are proved and it can not be considered as a summary proceeding based on the sole assertions of the Complainant if they are not sufficient.

It belongs to the Complainant to allow the commission to check its trademark rights and to enclose official documents including sworn translations of the trademark certificates, if needed.

Since I consider that the Complainant does not give evidence of any trademark right, the other elements do not need to be considered.

For all the foregoing reasons, I would conclude that the Complainant has no trademark which is identical or confusingly similar to the contested domain names <fp7.net> and <promoseven.net> and that the complaint does not meet the first element required by the UDRP.

Accordingly, I respectfully dissent.

 


 

Alain Marc Bensoussan
Dissenting Panelist

Dated: September 16, 2002