WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Sons of Hassan Abdul Karim Algahtani Company v. Lazord, Lazord

Case No. D2003-0629

 

1. The Parties

The Complainant is The Sons of Hassan Abdul Karim Algahtani Company, Al-Khobar, Saudi Arabia, represented by Alem & Associates, Lebanon.

The Respondent is Lazord, Lazord, Riyadh, Saudi Arabia.

 

2. The Domain Name and Registrar

The disputed domain name <lazord.com> is registered with the registrar Go Daddy Software.

 

3. Procedural History

The Complaint in this case was filed by e-mail on August 13, 2003, and in hardcopy on August 21, 2003, with the WIPO Arbitration and Mediation Center (the "Center").

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On August 14, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name in issue and to verify the following facts:

- To confirm that a copy of the Complaint was sent to Go Daddy Software, as required by the WIPO Supplemental rules for Uniform Domain Name Dispute Resolution Policy (the "Policy") Paragraph 4(b), by the Complainant;

- To confirm that <lazord.com> is registered with Go Daddy Software;

- To identify that the entity identified in the present case as the Respondent is the current registrant of the domain name;

- To provide full contact details that are available in Go Daddy Software, WHOIS database for the registrant, technical contact, administrative contact and billing contact, for the said domain name;

- To confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy"), applies to the registered domain name;

- To indicate the current status of the domain name;

Via e-mail communication dated August 14, 2003, Go Daddy Software transmitted to the Center its verification response confirming the following:

- That Go Daddy Software is in receipt of the Complaint sent by the Complainant;

- That Go Daddy Software is the Registrar of the domain name <Lazord.com>;

- That the Respondent is listed as the registrant of the domain name <Lazord.com>;

- That the contact details for the administrative, billing, and technical contact are provided (details not given here);

- That the Uniform Domain Name Dispute Resolution Policy (the "Policy"), applies to the domain name;

- That the domain name would remain locked during the administration proceedings.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint filed by the Complainant, and the proceedings commenced on August 22, 2003. Opportunity was granted as per the Rules for filling of a Response. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2003. This notification was sent by courier and e-mail. The Panel finds that the Center has satisfied its notification obligations under Rule 2(b).

The Center did not receive any response from the Respondent.

On September 15, 2003, the Center notified the Respondent of its default in complying with the deadline indicated in the notification of complaint and for the commencement of the administrative proceedings.

The Center appointed Pavan Duggal as the sole panelist in this matter on October 2, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The language of the administrative proceedings is English.

 

4. Factual Background

The Complainant in this administrative proceeding is "The Sons of Hassan Abdul Karim Algahtani Company for Trade and Constructing", a company organized under the laws of Saudi Arabia and is also known as "Hak Group Company". The dispute in the present Complaint is concerned with the registration of the domain name <lazord.com>. The Complainant registered "LAZORD" as a trademark in Saudi Arabia on November 14, 1996, and on December 4, 1996, an agent, acting on behalf of the Complainant registered the domain name <lazord.com>. The Complainant has claimed right to this domain name and has prayed for transfer thereof from the Respondent.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions in brief are as under:

The Complainant conducts in Saudi Arabia and abroad general trade, import and export agency. Since its inception, the Complainant has been trading by the name Lazord and has been a leading retailer for a great variety of products carrying the trademark "LAZORD". Besides, "LAZORD" is also known as a service mark owned by the Complainant, since the latter provides many services under the service mark "LAZORD".

The Complainant registered Lazord as a trademark in Saudi Arabia and has been using it since then for all its goods, such as sugar, salt, bread, coffee, biscuits etc. The Complainant has also created a logo out of the word Lazord as described in the Trademark Registration Certificate which also resides on one of its web pages and is the name of one of its companies also.

On December 4, 1996, an agent, acting on behalf of the Complainant, registered the domain name <lazord.com>, under her name but for the benefit of the Complainant. The expiry date of the registration was December 4, 2002, unfortunately the Complainant missed to renew it.

The Complainant has been trading by the word Lazord which was first registered as a trademark as mentioned above and then as a domain name and finally as a logo residing on the website "www.lazord.com.sa". The Complainant contends that it has registrations for the trademark "LAZORD" (Word and Logo).

It has been further contended that the Complainant has been well-known for its trademark "LAZORD" and it has been a leading seller of products carrying the trademark "LAZORD".

The Respondent in the present dispute has registered the same domain name <lazord.com> on January 13, 2003, few days after the expiry date for renewal of the domain name by the Complainant. This has been done without any legitimate benefit, exploiting the failure of the Complainant to renew the registration of the said domain name on its name and is thus a case of cyber squatting and intentional action to extort the Complainant.

It is further contended that the said act of the Respondent would ultimately tarnish the reputation of the trademark "LAZORD" which has been invested and built on bona fide intention, and will create a great likelihood of confusion as to the similarity of the cybersquatted domain name and would also cause unfair competition to the Complainant in its trade.

The Complainant has further contented that the Respondent has no rights or legitimate interest in respect of the domain name. It has been averred that simply by browsing today the domain name <lazord.com>, an expression in Arabic and English appears. The translation of the Arabic expression is the following: "Welcome at the Lazord site, soon site and forum Lazord" and the English expression reads: "E-mail-MSN Messenger: Lazord@Lazord.com".

The Complainant further states that neither a link to any commercial product or any service whatsoever nor demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services is depicted on this current webpage and that there is no proof that the Respondent has been commonly known by the domain name.

It is further the contention of the Complainant that the domain name was registered and is being used in bad faith. After the Complainant failed to renew the registration of the domain name and after the same was registered by the Respondent, the company sent an e-mail to the Respondent, informing him that it was saving the disputed domain name for its use and would like to transfer it back to its name if he has no use of it.

The answer the Complainant received from the Respondent for its question was "for how much?"

It has been averred that the Respondent has no use of the disputed domain name, otherwise, it would not have given such an answer. And it is obvious that it had registered the domain name under its name intending to sell it back to the Complainant, being the owner of the trademark "LAZORD" and the previous holder of the domain name <lazord.com>.

It has been further stated that no other legal proceedings have been commenced or terminated in connection with or relating to the domain name that is subject of the Complaint.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and

(2) That the Respondent has no legitimate interests in respect of the domain name; and

(3) That the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

It is the case of the Complainant that the disputed domain name <lazord.com> is the registered domain name of the Complainant who had it registered on December 4, 1996, and the expiry date for the same was December 4, 2002. But unfortunately the Complainant failed to renew it.

The Complainant had also registered the trademark "LAZORD" on November 14, 1996, and had been using it ever since for its various goods and services. Thereafter they used it as a domain name and finally they created a logo out of the word Lazord to which they reserve all its rights on its web page "www.lazord.com.sa". Thus they have been using the trade name "LAZORD" continuously.

The Panel therefore holds that the disputed domain name is exactly identical as that of the Complainant.

The Complainant has satisfied the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel has gone through the various documents filed by the Complainant along with the Complaint and has noted the Certificate of Registration of Trademark dated November 14, 1996. The said certificate has been issued by the Office of Registration Trademarks, Ministry of Trade, Kingdom of Saudi Arabia. The said certificate further shows that the Complainant is the owner not only of the trademark in the word Lazord, but is also the owner of the logo described in this certificate in the following terms:

"The word (Lazord) in Arabic and Latin letters, including at the center the Latin Letter (L) with a design similar to a shield in white, green, golden and black colors".

The continuous use of the said trademark by the Complainant since 1996, for various items including sugar, salt, bread, coffee and biscuit etc clearly shows that the Complainant has rights and legitimate interests in the domain name. Further, there is nothing on the record to show that the Respondent has any legitimate interests in respect of the domain name <lazord.com>.

This is further evident from the fact that on browsing the domain name <lazord.com>, an expression in Arabic and English appears and the translation of the Arabic, as contended by the Complainant, reads: "Welcome at the Lazord site, soon site and forum Lazord" and the English expression reads: "E-mail- MSN Messenger Lazord@lazord.com.", the result of which does seem to be unknown. Further the fact that no link to any commercial product or any service whatsoever nor any preparation to use the domain name in connection with any bona fide offerings of goods or services, shows that the Respondent registered the domain name only to take advantage of the inadvertence of the Complainant to renew the registration of their domain name. Besides the Respondent is not commonly known by the concerned domain name unlike the Complainant who has made a name for themselves with their trademark "LAZORD".

In Ford Motor Company v. International Newcastle, WIPO Case No. DBIZ2002-00185, it was held that, where the Complainant asserts that the Respondent has no rights or legitimate interests and where Respondent fails to contest such assertions, the Panel is entitled to infer that Respondent has no such rights or interests. It also cited the cases Alcoholics Anonymous v. Raymond, WIPO Case No. D2000-0007; and Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011 as authorities to support the same.

Thus, on the basis of the material available on record, the Panel comes to the conclusion that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The Panel finds merit in the contention of the Complainant that the Respondent had registered the domain name <lazord.com> only to take advantage of the Complainantís inadvertence in renewing the domain name registration and to cash on to their reputation and also had registered the domain name in order to sell it back to the Complainant. The record reveals that the Respondent had asked for a price to sell back the domain name to the Complainant.

It is likely that the continued use of the domain name <lazord.com> may induce the potential customers to deal in some manner with the Respondent believing them to be licensed or authorized by the Complainant. Further, the potential customers would be induced to believe that the Respondent have some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant.

It is felt that the Respondent could not have been unaware of the Complainant's trademark. Therefore by knowingly choosing a domain name consisting of the Complainant's trademark, the Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the Complainant.

The Respondent is in default in this proceeding thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the domain name.

Further such good faith could not be deduced from the e-mail which Respondent sent, in which he had asked "how much?" for transferring the domain name back to the Complainant.

This conduct of the Respondent, as is evident from the perusal of the relevant e-mails, clearly shows that the domain name has been registered and is being used in bad faith. There are numerous decisions of the Center wherein demanding money for transfer of the domain name has been considered as a bad faith registration.

In SAP Systeme / SAP India Systems v. Davinder Pal Singh Bhatia, WIPO Case No. D2001-0504, the domain names <sapmaster.com> and <sapwizard.com> had been registered by the Respondent. The record revealed that the Respondent approached the Complainant for selling the impugned domain names. The Panel therefore held that the registration of the disputed domain names by the Respondent was in bad faith.

In Michelle Barry v. For Sale, Claim Number: FA0007000095110, the Complainant asserted that the Respondent acted and is acting in bad faith. The Respondent did not deny that assertion. Further correspondence by the Respondent showed Respondentís intent to sell the domain name for $1,245. The Respondent registered and was using the name in question for the purpose of selling it to the Complainant or the Complainantís competitors, for valuable consideration in excess of out-of-pocket costs (paragraph 4(b)(i) of the Policy). Based on the preceding facts, the Panel ruled that the Respondent registered and was using the domain name in bad faith.

In Union Telephone Company v. IdeaTrade - This Domain is For Sale -Claim Number: FA0201000103816 the panel observed, that it could be inferred from the Respondentís "IdeaTrade-This Domain is For Sale-" WHOIS Registration name that Respondent registered the disputed domain name primarily for the purpose of selling it. Such use also permitted the finding of bad faith registration pursuant to the Policy, paragraph 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (National Arbitration Forum April 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Educational Testing Serv. v. TOEFL, WIPO Case No. D2000-0044 (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

In the present case too, given the substantial reputation and the undoubted goodwill in the trademark and name "LAZORD" of the Complainant and for the reasons given above it is difficult to see how the Respondent could have registered and sought to have used the domain name in good faith.

Further, in the present case, the Respondent has been alleged to have provided an address for the administrative and technical contact, which does not really exist in Saudi Arabia.

The above contentions and the silence of the Respondent on the matter clearly prove bad faith on the part of the Respondent. The Panel is therefore, of the opinion that the registration and use of the disputed domain name by the Respondent is in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <lazord.com> be transferred to the Complainant.

 


 

Pavan Duggal
Sole Panelist

Dated: October 16, 2003.