The Complainant is Khulood AlRostamani, of Dubai, United Arab Emirates.
The Respondents are Mohamed Hassan Khalil El Haddad of Dubai, United Arab Emirates and Kais A. Al-Essa of Dammam, Saudia Arabia.
The disputed domain name, <km-properties.com> (the “Domain Name”), is registered with Abacus America Inc. d/b/a Names4Ever (the “Registrar”).
The Complaint, which identified Mohamed Hassan Khalil El Haddad as the registrant of the Domain Name, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2008. On December 10, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
On December 11, 2008, the Registrar transmitted by email to the Center its verification response informing the Center that the Respondent, Kais A. Al-Essa, was listed as the registrant and identifying Mohamed Haddad as the Administrative Contact.
The Center duly informed the Complainant that the Complaint was administratively deficient in that regard (amongst others) and the Complainant filed an amendment to the Complaint on December 18, 2008 adding Kais A. Al-Essa as co-Respondent.
It is not in dispute between the parties that Mohamed Haddad is the ‘true' registrant of the Domain Name, so for the purposes of this administrative proceeding the Panel uses the term “Respondent” to mean Mohamed Haddad.
The Center verified that the Complaint together with the amendment to 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2009.
Pursuant to the Respondent's request (dated December 28, 2008) to extend the time to file a Response, and the Center taking into account the Respondent's reasons for the Request stated therein and further considering the objections of the Complainant, the Center granted an extension of time to file a Response until January 18, 2009 in accordance with paragraph 5(d) of the Rules. The Response was filed with the Center on January 19, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 6, 2009. 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 Complainant should have filed the Complaint in the name of the Complainant's company, KM Properties (LLC) (the “Company”), since it is the Company's claimed trade mark rights upon which the Complainant's case is based. By the same token, it should have been to the Company (not the Complainant) that the Complainant sought transfer of the Domain Name. However, the Panel does not propose to dismiss the Complaint on such a narrow ground and for the purposes of this administrative proceeding treats the Complaint as having been filed by the Complainant on behalf of the Company and with a view to the Domain Name being transferred to the Company.
Finally, it will be noted above that despite having obtained from the Center, in the face of opposition from the Complainant, a substantial extension of time for the filing of the Response, the Respondent failed to meet the extended deadline for the Response. Had there been good reasons why the Respondent could not meet the deadline, the Respondent should have notified the Center in advance and sought a further extension, but he did not do so. The Panel therefore declines to accept the Response into this administrative proceeding.
The Complainant and the Respondent were at one time in business together. Their business vehicle was the Company, which they co-own or co-owned. The Panel is not clear as to the current ownership of the Company. At some stage during 2008 the parties fell out.
On March 11, 2004, when CEO of the Company, the Respondent registered the Domain Name. There is a dispute between the parties as to whether the Respondent registered the Domain Name in his personal capacity or for the Company in his capacity as CEO of the Company.
The Complainant contends that the Domain Name is identical or confusingly similar to the Company's name, which is registered as a trade mark in the United Arab Emirates and which is the name under which the Company has communicated online with its customers since 2004.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent registered the Domain Name at a time when he was CEO of the Complainant, but ceased to have any responsibility for the assets of the Company (including the Domain Name) when he was removed from his post as CEO of the Company in October 2008. The Complainant contends that on that event the Domain Name should have been transferred into the ownership of the Company.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. The Complainant states that since October 2008, the Respondent has ‘defaced' the Company's webpage and has inserted onto the website warnings to the effect that the owners of the Company are in dispute with the result that the Company's customers are “confused and concerned as to the status of their investments with the Company”. In addition, the Respondent has blocked all access to the Company's emails and has compelled the Company to adopt another domain name pending resolution of this dispute.
The Complainant seeks transfer of the Domain Name to the Complainant, but as indicated in Section 3 above the Panel is willing to treat the request for transfer as a request for transfer of the Domain Name to the Company, the entity said to have trade mark rights in the name, KM Properties.
For the reasons set out in Section 3 above, the Panel has declined to accept into this administrative proceeding the Respondent's out-of-time Response.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
Before dealing with these heads of the Complaint, it is worth noting that the Policy is not often likely to provide a suitable forum for resolving a dispute between parties who were in business together at time of registration of the domain name in dispute, but who have since fallen out. Additionally, the Policy is particularly inappropriate for resolving disputes where the factual background is both complex and disputed and where the dispute extends over a wide front.
The Domain Name comprises, in substance, the name of the Company in respect of which the Complainant claims registered trade mark rights. However, the document exhibited in support of those claimed trade mark rights does not support the existence of any trade mark registration, merely the existence of several trade mark applications filed on August 10, 2008 in the name of the Company.
The Complainant asserts that the Company has been using its name to communicate online with its customers since March 2004. No express claim to unregistered, common law trade mark rights is made, but the Panel would have been prepared to consider the matter if for example evidence had been put before the Panel as to the nature and extent of the Company's business and its use of its name.
There being no evidence put before the Panel in this proceeding as to the existence of any relevant trade mark rights, the Panel finds that the Domain Name is not identical or confusingly similar to a trade mark or service mark in which either the Complainant or the Company has rights.
In light of the above finding it is unnecessary for the Panel to address this issue.
In light of the finding under B above it is unnecessary for the Panel to address this issue.
For all the foregoing reasons, the Complaint is denied.
Dated: February 12, 2009