The Complainants are Sodamco Holding S.A.L. and Sodap Liban S.A.L. of Beirut, Lebanon, represented by Walid Nasser & Associates, Lebanon.
The Respondent is Sodapko (a.k.a. Sodapko for Construction Materials) of Kuwait, represented by Elie Melkane, Attorney at law, Lebanon.
The disputed domain name, <sodapko.com> (the “Domain Name”), is registered with Intercosmos Media Group d/b/a directNIC.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2008. On December 24, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 26, 2008, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainants on December 31, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 6, 2009.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for the UDRP (the “Rules”), and the WIPO Supplemental Rules for the UDRP (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 January 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2009. The Response was filed with the Center on January 30, 2009.
On February 3, 2009 the Complainants requested permission to file a supplemental filing by way of answer to the Response on the basis that the Response contains “wrong and misleading information”.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 25, 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 Managing Director of the Respondent is Mr Christophe Bassil. In substance the allegations leveled at the Respondent are allegations leveled at Mr Bassil. Accordingly, for the purposes of this administrative proceeding the Panel treats Mr Bassil and the Respondent as one and where the context so permits references herein to the Respondent are references to Mr Bassil.
On March 11, 2009 the Panel decided that he needed further information from the parties before he could complete his decision and issued a procedural order in the following terms:
“The Panel declines the Complainants' request to file a further submission in response to the Response.
However, the Panel does require clarification of certain points from the parties:
1. The Complainants refer to proceedings before the Lebanese Judge for Urgent matters, which resulted in a seizure order, which the Respondent claims was “frozen” on March 15, 2008. The Panel does not have any documentation in the English language in relation to this matter. The Panel proposes to ignore this aspect of the dispute unless an English translation of any relevant documents is provided to the Panel. A rough translation will suffice.
2. The Respondent states that the Complainants “were aware of his project in Kuwait, most particularly his company's name (the Respondent)”. What evidence is there to support this bare assertion?
3. The Respondent is requested to explain to the Panel whether SODAPKO has any special meaning or significance for the Respondent or whether it is simply a made-up word.
The Respondent is requested to respond to points 2 and 3 by Monday March 16, 2009 and the Complainants have until Thursday March 19, 2009 to file a response, should they wish to do so. If either party regards the matter set out in point 1 as being of importance, the Panel will need a translation by Thursday March 19, 2009.
The time for issuance of the decision is extended to Tuesday March 24, 2009.”
The Respondent responded on March 16, 2009 although the annexes referred to in the body of the response did not reach the Panel until March 19, 2009. The Complainants replied on March 19, 2009.
The Complainants are associated Lebanese companies, which have been engaged in the construction industry in the Middle East since the mid-1980s. For the purposes of this administrative proceeding the Panel treats the Complainants as one.
It is not in dispute that the Complainants are the registered proprietors of Lebanese trade mark registrations for the marks SODAP and SODAMCO (in logo form) for goods and services relating to the construction industry. Those registrations date back to 2002 and 2003.
The Complainants' domain name is <sodamco.com>, which the Complainants claim to have registered on September 13, 2006, but which their exhibit Annex (ix) indicates was registered on September 22, 2004.
It is not in dispute that the Respondent held formal positions with the Complainants until he resigned those positions by his resignation letter of November 8, 2006.
In January, 2007 the parties met over lunch to discuss the possibility of a joint venture to be established in Kuwait, but those negotiations led nowhere.
The Respondent registered the Domain Name on July 3, 2007.
On July 7, 2007 the Respondent Company was registered in Kuwait under the name Sodapko For Construction Materials.
At some stage before March 15, 2008 the Complainants applied to the Judge for Urgent Matters in Beirut for an injunction ordering seizure of the Respondent's brochures. It is not in dispute that such an order was made. However, the Respondent claims that that order was “frozen” by the same judge on March 15, 2008 and that “the alleged ‘counterfeit' brochures were remitted to the Respondent representative, under his custody”. The Panel mentions this here simply to complete the chronological story. The Complainant has submitted a translation of a document indicating that that order is still in force. The Respondent has submitted a translation of a document seemingly indicating that the Respondent has petitioned the court for a stay of execution of the order and that the court has ordered that the Respondent's brochures be returned to the Respondent provided that the Respondent makes no use of them pending the next hearing. The action is still before the court.
On March 19, 2008 the Complainants' lawyers sent the Respondent a warning letter notifying the Respondent that the Domain Name infringed the Complainants' rights and was causing them significant damage
On May 20, 2008 the Complainants launched a ‘penal lawsuit' in Lebanon against the Respondent for crimes under inter alia sections 702 and 714 of the Penal Code and section 86 of law number 75/97. The lawsuit appears to be still pending.
On June 3, 2008 one Bassam Arif Qisi notified the authorities of the United Arab Emirates that the Respondent had escaped, not having worked for more than 7 days.
On June 22, 2008 the Complainants served upon the Respondent by way of a process server a warning letter in similar terms to that sent on March 19, 2008.
On July 23, 2008 the Chief Clerk of the Kuwaiti Penal Court certified that the Complainants had commenced proceedings against the Complainant for trade mark infringement and unfair competition.
On October 8, 2008 the Respondent applied to change the name of the Respondent company to Baxel Sodapko For Construction Materials and this name change was registered on November 3, 2008.
The Complainants contend that the Domain Name is confusingly similar to their Lebanese registered trade marks, SODAP and SODAMCO, and to their domain name, <sodamco.com>. They produce a schedule of their trade mark registrations, which include among their number a Kuwaiti registration of the mark, SODAMCO (in logo form).
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainants contend that their trade marks are invented words and that for someone engaged in the same industry to choose such a similar name, the purpose must have been to create an impression of an association with the Complainants. The Complainants assert that they have not given the Respondent any permission to use their trade marks.
The Complainants contend that the Domain Name was registered and is being used in bad faith. They point out that the Respondent was until 2006 closely associated with the Complainants and that in 2007, following his departure from the Complainants, he set up a company in the same area of business operating in the same geographical area under a confusingly similar name. In addition the Respondent's brochures are in many respects very similar to those of the Complainants.
The Complainants recite the various actions they have taken against the Respondent in Lebanon, Kuwait and the United Arab Emirates. They assert that the Respondent did not respond to their warning letters and that this should be taken as evidence of bad faith. They claim that the use which the Respondent company is making of its name and the Domain Name is calculated to cause confusion and to disrupt the business of the Complainants.
In its response to the Panel's procedural order the Complainants deny that they had any advance notice of the Respondent's plans to set up a business using the name Sodapko.
The Respondent admits to having been a board member of the Complainants up to November 2006, but contends that the Complainants “were aware of his project in Kuwait, most particularly his company's name”. The Respondent contends that the name of his proposed business formed part of a lunchtime discussion with the Complainants in early 2007.
The Respondent contends that the Complainants' registered rights in respect of SODAP are limited to Lebanon. The Respondent contends that the Complainants' rights do not extend elsewhere and the Respondent produces a document to show that a third party is using the name, SODAP-THAILAND, in the same industry. In response to the Panel's procedural order the Respondent contends that SODAP is a name first used by the French construction company, Lafarge, now forming part of the Parex Group. The Respondent produces two documents dating back to 2008 from the Parex Group and making reference to the Respondent's company names featuring the name, Sodapko, and apparently without complaint.
The Respondent contends that there is no likelihood of confusion in that since the name change in October/November last year the Respondent has been known as Baxel. Moreover, in any event the parties' customers in this high-tech industry are sophisticated and not the sort of people to be confused in relation to the types of product dealt in by the Respondent. The Respondent asserts that the Complainants have no business in Kuwait and produces copies of the Complainants' brochures identifying their overseas offices, none of which is in Kuwait.
The Respondent contends that the Respondent does have rights or legitimate interests in respect of the Domain Name. He recites the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy and contends that each of them is applicable.
The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent recites all the examples of bad faith registration and use set out in paragraph 4(b) of the Policy and denies that any of them is applicable.
As to the judicial proceedings initiated by the Complainants, the Respondent refers to the “freezing” of the seizure order on March 15, 2008 (see section 4 above). He denies that he received any notice of the Kuwaiti criminal lawsuit prior to receipt of the Complaint. He asserts that residence cancellation is normal in the UAE, he having resigned from the Board of the Complainants. He states that when he received the Summons in Kuwait, a meeting was set up between the parties' representatives, but that the Complainants' representative cancelled the meeting.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants 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 Complainants have 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.
The Complainants have satisfied the Panel that they have registered rights in Lebanon covering device marks the principal elements of which are SODAP and SODAMCO.
The Domain Name (absent the generic domain suffix, which may be ignored for this purpose) comprises SODAP + KO or, to put it another way SODAMCO with the letters ‘MC' replaced by the letters ‘PK'.
Whichever way one looks at it, in the view of the Panel, the Domain Name is confusingly similar to the Complainants' registered trade marks.
The fact (if it be a fact) that the Complainants' rights are restricted to Lebanon is of no consequence. The Policy does not require anything more than proof of relevant trade mark rights and the appropriate test for confusing similarity for this purpose is a straightforward name for mark comparison.
Given that both parties trade in the same area of business and that to the Respondent's knowledge the Complainants trade widely around the Middle East (albeit not in Kuwait, perhaps) and that the Complainants have trade mark rights in respect of the names SODAP and SODAMCO in the Middle East (including in respect of the latter a registration in Kuwait), it seems to the Panel to have been an extraordinarily provocative move for the Respondent to have commenced trade under the name SODAPKO without first having consulted the Complainants. The Panel takes that view, because, to the Panel's eyes and ears, the name SODAPKO appears very similar to the Complainant's trade marks, SODAP and SODAMCO. The Panel would be very surprised if confusion did not result.
The Respondent states that he did inform the Complainants in advance of his choice of name for his business (to which they did not object) and adds that confusion will not result (a) because his business, unlike that of the Complainants, is in Kuwait and (b) the clientele for the parties' products are sufficiently sophisticated to render confusion impossible. The Panel notes that the Respondent's brochure indicates trade in countries other than Kuwait, albeit in North and West Africa.
On the papers before the Panel, the Panel is unable to determine with sufficient confidence where the truth lies. There is a direct conflict of evidence over whether or not the parties discussed the Respondent's choice of name for his Kuwaiti business at their lunchtime meeting in January 2007. If the Respondent's story is accurate and the Complainants were aware of the Respondent's plans back then and raised no objection, the Complainants cannot now reasonably argue that the Respondent's use of the SODAPKO name is anything other than a bona fide use. The Complainants deny that the Respondent's story is accurate, but there does not appear to be any dispute that the Respondent is using the Domain Name in relation to a substantial construction business of which the name SODAPKO forms part.
The Panel had hoped that the procedural order set out in section 3 above would have clarified the factual position somewhat, but it has not done so. It has raised more questions than it has answered. The Respondent's response to that order was particularly unhelpful, producing documents purporting to show that the French originator of the SODAP name is in business relations with the Respondent and has not objected to the Respondent's use of the SODAPKO name, but failing to produce any evidence that the company in question, Lafarge/Parex, has any rights in respect of the SODAP name.
However, in light of the Panel's finding under the next head, it is unnecessary for the Panel to come to any final determination as to whether the Respondent has rights or legitimate interests in respect of the Domain Name.
Those promulgating the Policy back in 1999 made it clear that the Policy was intended to deal with a very narrow category of trade mark infringement, namely ‘cybersquatting'. The Policy was never intended to deal with complex intellectual property disputes.
In the Panel's view this dispute is a dispute, which, if it cannot be resolved by negotiation, needs to be resolved by way of court proceedings. It is to be noted that the Complainants have not been slow to institute court proceedings (see section 4 above). There appear to be proceedings pending in both Lebanon and Kuwait. Both sets of proceedings are for trade mark infringement and unfair competition and include claims in respect of the trade mark rights asserted by the Complainants in this administrative proceeding. Whether or not those proceedings are technically capable of dealing with the dispute over the Domain Name, the Panel does not know. However, the Panel is firmly of the view that the court is the appropriate forum for this dispute, which is complex, multi-jurisdictional and fraught with contested facts. It is not a case of cybersquatting.
The Panel is unable to conclude that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dated: March 24, 2009