Complainant is Al Hilal Bank of Abu Dhabi, United Arab Emirates, represented by Al Tamimi & Company, United Arab Emirates.
Respondent is Stephen Ranzini of Ann Arbor, Michigan, United States of America, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The disputed domain names <alhilalbank.com>, <alhilalbank.net>, and <alhilalbank.org> are registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2009. On February 2, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On February 2, 2009, Network Solutions, LLC transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceeding commenced February 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2009. The Response was filed with the Center February 24, 2009.
The Center appointed Ross Carson, Pravin Anand, and Sandra J. Franklin as panelists in this matter on March 23, 2009. The Panel finds that it was properly constituted. Each member of 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.
Complainant is currently the owner of the following registered trademarks:
United Arab Emirates (“UAE”) Trademark Registration No. 89530 for the trademark AL HILAL BANK in English and Arabic characters applied for on November 26, 2007 under Application No. 103248 and registered on June 16, 2008 in relation to the following services under Class 36: provision of Shariah-compliant banking services; financial affairs; monetary affairs; real estate affairs; valuation and financial appraisal of properties; property acquisition and management services; rental of real estate; brokerage, evaluation and appraisal of real estate; rental of office space; financial leasing services; property leasing services; banking services; administration of financial affairs; trustee services; capital investment; administration of mutual funds; mutual funds services; venture capital and venture capital management services; cash management services; loan services; mortgage services; mortgage banking services; provision of security for loans; credit services; lease and purchase financing; hire purchase financing; credit card; charge card; cash card; cheque guarantee card, payment card and debit card services; provision of finance, money exchange and money transmission services; etc.
Lebanese Trademark Registration No. 116059 for the trademark AL HILAL BANK in English and Arabic characters and logo in black and white and orange applied for and registered on April 24, 2008 in relation to services in Class 35: advertising; business management; business administration, office functions and services in Class36: financial affairs; monetary affairs; real estate affairs.
Lebanese Trademark Registration No. 116060 for the trademark AL HILAL BANK in English and Arabic characters in black and white applied for and registered on April 24, 2008 in relation to services in Class 35: advertising; business management; business administration, office functions and services in Class 36: financial affairs; monetary affairs; real estate affairs.
Morocco Trademark application No. 116323 for the trademark AL HILAL BANK in English and Arabic characters in black and white applied for on March 28, 2008 in relation to services in Class35: advertising; business management; business administration; office functions and services in Class 36: insurance; financial affairs; monitory affairs; real estate affairs.
Morocco Trademark application No. 116324 for the trademark AL HILAL BANK and logo in English and Arabic characters in black and white and color applied for on March 28, 2008 in relation to services in Class 35: advertising; business management; business administration; office functions and services in Class 36: insurance; financial affairs; monitory affairs; real estate affairs.
Complainant appears to be the owner of a number of domain name registrations registered in the name of Al Mulla, Mansour including the following:
<bankalhilal.com> registered on April 9, 2007;
<bankalhilal.net> registered on April 9, 2007;
<bankalhilal.org> registered on April 9, 2007;
<alhilalbank.biz> registered on April 12, 2007.
Respondent is the Registrant of the following domain names which are in dispute in this case:
<alhilalbank.com> registered on October 31, 2006;
<alhilalbank.net> registered on October 31, 2006;
<alhilalbank.org> registered on October 31, 2006.
Complainant submits that it is a statutory bank which was originally announced in 2006 and, formally established in 2007 through a Royal Decree No. 21 of 2007 of His Highness Sheikh Khalifa bin Zayed Al Nahyan, Ruler of Abu Dhabi and President of the UAE, having authorised capital of AED 4 billion (approximately USD 1.09 billion). Complainant is solely owned by the Abu Dhabi Investment Council which is a leading sovereign wealth fund. Complainant's business activities include provision of Islamic commercial banking services including credit facilities and retail banking; Islamic investment banking services including asset management and investment advisory.
Complainant submits that its growth is evidenced by the fact that it is planning to open 10 branches each year and is expected to have around 50 branches across the globe by the year 2013. Complainant has also established a wholly-owned insurance subsidiary named “AL Hilal Takaful”. Further, Complainant is also in the process of setting up wholly-owned subsidiaries for its real-estate and brokerage businesses.
Complainant states that it is the owner of trademark registrations for AL HILAL BANK in the United Arab Emirates, Lebanon and Morocco as set forth in paragraph 4 immediately above.
Complainant submits that even before formal incorporation of Complainant through a Royal Decree, speculators and banking professionals had been assessing the value in the domain name of Complainant at various Internet chat forums, and the anticipated launch of Complainant has been discussed widely in leading business magazines. This goes to establish the fact that Complainant's trademark had achieved international fame right from the time of Abu Dhabi government officials' announcement of the intention to establish a new international bank with the name and trademark of AL HILAL BANK.
Complainant states that it is the settled UDRP jurisprudence that if a complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights within the meaning of paragraph 4(a)(i) of the Policy, and the location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark. See, Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358.
Complainant further submits that it is settled UDRP jurisprudence that: registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identicalness or confusing similarity; and that the registration of a trademark by a complainant is sufficient for the purposes of the Policy, paragraph 4(a)(i), even when such registration is quite recent and even when such registration of the trademark do not predate the registration of the domain name in question. See, Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.
Complainant states that Complainant's research in WHOIS database reveals that the disputed domain names (viz, <alhilalbank.com>, <alhilalbank.net>, and <alhilalbank.org>) were registered by Respondent on October 31, 2006 and that the registration is valid through October 31, 2012. The currently available true and correct printouts of the contents on the disputed domain names are attached and collectively marked as Annexure H to the Complaint.
Complainant states that the web pages associated with the disputed domain names show that Respondent is not using the disputed domain names for banking purposes as the available content of the disputed domain names has highlighted the following information: first , “This site is under Construction” (on the top right hand side of the websites on the disputed domain names); secondly, the web pages offer domain names and links to domain names searches at other websites thus diverts and directs traffic to other websites (bottom of the website on the disputed domain names); and thirdly the web pages offer search and links to other websites and searches thus diverts and directs traffic to other websites.
Complainant further states that (based on Complainant's research so far), apart from registering the disputed domain names, Respondent has not used a trademark for or including “Al Hilal Bank” or “Al Hilal” in relation to any of his goods or services – neither in the United States (which is the home jurisdiction of Respondent), nor in the United Arab Emirates, (which is the home jurisdiction of Complainant). This fact is evident from the search results for the trademark AL HILAL BANK or even the word “hilal” at the United States Trademark Office (USPTO), which clearly shows that the word “hilal' or the trademark of AL HILAL BANK is not registered in the name of Respondent, which goes to prove that Respondent neither uses the AL HILAL BANK trademark, nor has any intention to use the AL HILAL BANK trademark even in his home jurisdiction. A true and correct printout of the search result for the word “hilal” at the USPTO website is attached and marked as Annexure I to the Complaint.
Complainant states that Respondent is not using the disputed domain names for any purpose as the currently available content of the disputed domain names highlights information, such as: “This site is under Construction” (on the top right hand side of the website); offers domain names (bottom of the website); and offers search and links to other websites and searches. This all goes to establish that Respondent has not used the disputed domains to establish any kind of web presence at all since the date of registrations of the disputed domain names on October 31, 2006.
Complainant submits that it is settled UDRP jurisprudence that if a disputed domain name carries links to other website, or carries an “under construction” sign, or offers to sell other domain names from the website at the disputed domain name, such activities do not amount to “use” of the disputed domain name for any purpose, and thus the respondent has no legitimate interest in respect of the disputed domain name. See, Sears, Roebuck and Co. v. Hanna Law Office, WIPO Case No. D2000-0669; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275; and SunFest of Palm Beach County, Inc. v. Electronic System Technologies, Inc. et al., WIPO Case No. D2000-0631.
Complainant further submits that it is also obvious from the perusal of the above paragraphs that, apart from registering the disputed domain names, Respondent has not used a trademark for or including “Al Hilal” or “Al Hilal Bank” in relation to any of his goods or services – neither in the United States (which is the home jurisdiction of Respondent), nor in the United Arab Emirates in which Complainant offers banking services. This fact is evident from knowledge of banks operating in the United Arab Emirates and the search results for Complainant's trademark at the United States Trademark Office (USPTO), which clearly shows that the trademark AL HILAL BANK (or any combination thereof) or even the word “hilal” is not registered in the name of Respondent, which goes to prove that Respondent neither uses the AL HILAL BANK trademark, nor has any intention to use the AL HILAL BANK trademark even in his home jurisdiction.
Complainant states that it is settled UDRP jurisprudence that mere registration of a domain name is not sufficient to confer rights or legitimate interests in the domain name, and that non-use of a domain name is considered evidence of a lack of rights or legitimate interests on part of Respondent. See, N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387; and Internet Billing Company Ltd. v. Fundu Technologies, NAF Claim No. 95547.
Complainant states that it is the owner of trademark registrations for AL HILAL BANK in the United Arab Emirates, Lebanon and Morocco as set forth in paragraph 4 above.
Complainant submits that even before formal incorporation of Complainant through a Royal Decree, speculators and banking professionals had been assessing the value in the domain name of Complainant at various Internet chat forums, and the anticipated launch of Complainant has been discussed widely in leading business magazines. This goes to establish the fact that Complainant's trademark had achieved international fame right from the time of Abu Dhabi government officials' announcement of the intention to establish a new international bank with the name and trademark of AL HILAL BANK.
Complainant submits that Respondent has registered not just one but three disputed domain names carrying the trademark of Complainant. Over and above the multiple registrations, Respondent has been passively holding the disputed domain names since the date of registration of such domain names, and the same are being used to offer domain names and offer search and links to other websites and searches. Thus Respondent has not put the disputed domain names to any legitimate use, and has registered the disputed domain names in bad faith because such passive holding of the disputed domain names amounts to a calculated attempt by Respondent to prevent Complainant from using its registered trademark on the Internet.
Complainant states that it is settled UDRP jurisprudence that registration of multiple domain names that are identical or confusingly similar to registered marks of others is evidence of bad faith. See, Big Dog Holdings, Inc. dba Big Dog Sportswear v. Frank Day Red River Farms, Inc., NAF Claim No. 93554. Therefore, passive holding of disputed domain names registrations by Respondent amounts to use in bad faith. See also, McNeil Consumer Brands Inc v. Mirweb Solutions, WIPO Case No. D2000-0612, which goes to establish that Respondent's conduct is preventing Complainant (owner of the trademark or service mark) from reflecting its mark in a corresponding domain name.
Respondent submits that nothing in the Complaint entitles Complainant to the requested relief. Specifically, Respondent registered the disputed domain names in good faith on October 31, 2006, before Complainant was established, before Complainant began using the marks AL HILALBANK or AL HILAL, and before Complainant filed for or registered the AL HILAL BANK trademark.
Respondent further submits that he has extensive experience in the banking industry, including experience in Islamic banking since 2002 and registered the disputed domain names for use in connection with an online banking business specializing in Islamic banking services, and his demonstrable preparations to use the domain names to offer bona fide services, namely, online banking services, constitutes Respondent's legitimate interest in the domain names pursuant to paragraph 4(c)(i) of the Policy. Respondent's submissions on the three elements of the Policy are set out in relevant part below.
Respondent did not make a submission on this issue.
Respondent is a financial professional with an extensive background in the banking industry for more than 20 years, with significant experience in Islamic banking services. Islamic banking services are those compliant with Sharia's (Islamic law). Respondent is a founder of University Bancorp, Inc., a bank holding company, and has served as President and Chief Executive Officer of University Bancorp, Inc. from 1988 to the present. Respondent is the Chairman and President of University Bank, an FDIC-insured bank wholly owned by University Bancorp, Inc. University Bank offers a full range of commercial and personal banking services, and manages a total of USD 5.3 billion in assets. Respondent is the Chairman of the following three subsidiaries of University Bank: (1) University Islamic Financial Corporation, an Islamic banking company; (2) University Insurance and Investment Services Inc., an insurance and investment agency; and (3) Midwest Loan Services, which specializes in the residential home mortgage subservicing business (see University Bancorp, Inc.'s 2007 Annual Report, Ex. 1 to Response).
University Bank has offered Islamic banking services since 2002, and these services constitute a substantial part of University Bank's business. For example, University Islamic Financial's revenues from Islamic banking services were USD 1,078,415 in 2008 and comprised approximately 8. 2% of University Bank's revenues in 2008. University Bank's involvement in Islamic banking has been the subject of media attention since at least as early as 2004. Examples of press articles from 2004, 2005, and 2006 are attached as Exhibit 3 to the Response.
Respondent submits that based on his success with Islamic banking with a traditional bricks-and-mortar bank with some online presence, Respondent began developing the concept of an online Islamic bank in 2003. In October 2006, as part of Respondent's development efforts, he traveled to Kuwait and met with Dr. Ali A. Al Howell of the Kuwaiti firm Sharkia-Eastern Holding Group of Companies regarding a proposed venture for a purely online bank (i. e. a bank with no physical locations). The name “Al Hilal Bank” was selected for this business because “Al Hilal” is the Arabic term for “crescent moon”, and the crescent moon has a favorable connotation in Arabic culture with its association as a primary symbol of Islam. On October 31, 2006, while in Kuwait, Respondent registered the disputed domain names, which reflect the name of the proposed bank, in anticipation that the domain names would be used for the bank's website. Stated in a declaration of Respondent attached as Exhibit 4 to Response.
In December 2006, Respondent again traveled to Kuwait, and met with Dr. Howell regarding the proposed Al Hilal Bank. Respondent (through Jove Corporation, another company of which he is Chairman and a shareholder) and Dr. Howell subsequently formed on December 22, 2006 a British Virgin Islands company named Al Sharkia-Hilal Company Ltd. (“Al Sharkia-Hilal”) to be the holding company for the Al Hilal Bank in each country. The name “Al Sharkia-Hilal” was chosen because it reflects the Sharkia portion of Dr. Howell's company and the Al Hilal portion of the proposed bank name Al Hilal Bank. “Sharkia” means “eastern” in Arabic. The term “bank” was not included in the holding company name because the British Virgin Islands (like other jurisdictions) regulates terms included in company names, and “bank” is such a regulated term (Respondent's Declaration, Exhibit 4 to Response paragraph 10). A copy of the Certificate of Incorporation from the British Virgin Islands' Registrar of Corporate Affairs showing the incorporation of Al Sharkia-Hilal is attached as Exhibit 6 to Response. A copy of the Certificate of Incumbency dated February 15, 2007 from the company's registered agent listing Mr. Ranzini and Dr. Howell as the directors of Al Sharkia-Hilal is attached as Exhibit 7 to Response.
Respondent declared in a declaration pursuant to Section 28 U.S.C. §1746 that he had no knowledge of any information or speculation about Complainant's potential existence or its potential name when he registered the disputed domain names in October 2006 (Respondent's Declaration, Exhibit 4 to Response paragraph 11).
Five months after he registered the disputed domain names, Respondent received an email from Mansour Al Mulla on March 28, 2007 regarding the domain name <alhilalbank.com>. Mr. Al Mulla asked Respondent to discuss selling the domain name, and stated he intended “to use it for a start-up finance company, but I have to make sure that the name is not going to cause controversy; otherwise I will have to re-think the name for this company”. Respondent states on information and belief, the individual named Mansour Al Mulla who sent the above-described email to Respondent is one-and-the-same as Mansour Mohammed Al Mulla, the member-rapporteur of the Founders Committee constituted by the Abu Dhabi government and charged with setting up Complainant's company. A copy of a March 6, 2007 article from the Khaleej Times Online's website identifying Mr. Al Mulla as a member of Complainant's Founders Committee is attached as Exhibit 9 to the Response. Copies of additional March 2007 articles from other news websites (“www.gulfnews.com”, “www.alhudacibe.com”, and “www.ame.info”) identifying Mr. Al Mulla as a member of Complainant's Founders Committee are attached as Exhibit 10 to the Response.
Respondent states that after sending Respondent the above-described email in March 2007, Mr. Al Mulla registered the domain names <bankalhilal.com>, <bankalhilal.net>, and <bankalhilal.org> on April 9, 2007. Mr. Al Mulla also registered the domain name <alhilalbank.biz> on April 12, 2007. These domain names are currently being used by the registrar, Network Solutions, for “under construction” websites with links to various commercial websites. WhoIs printouts and website printouts for these domain names are attached as Exhibit 11 to Response.
Respondent has not yet used the disputed domain names for the website of Respondent's proposed Al Hilal Bank for a number of reasons. First, his Al Hilal Bank project is still in development. Second, the development and establishment of a bank, particularly a bank that offers Islamic banking services globally, is a process that requires a significant amount of time and resources. Third, Respondent is in negotiations with a group that has Islamic banking activities in several nations overseas to acquire a stake in University Bank's Islamic banking operations, and while they are interested in expanding operations globally through the Internet these plans are predicated upon successfully concluding their initial acquisition. Lastly, the public presence and public branding including the website of such a global Islamic bank is critical and would be the last part of the business plan to be executed once the bank is formed.
Respondent states that the disputed domain names are being used by the registrar, Network Solutions, for “under construction” websites with links to various commercial websites, as shown by the website printouts attached as Exhibit 12 to the Response. These websites, like all such websites posted by Network Solutions, display a link, “Why am I seeing this ‘Under Construction' page?”, that connects to a window explaining that “This ‘Under Construction' page is an automatically generated placeholder Web page for a domain that is not yet attached to an active Web site. This page replaces the ‘Not Found' error pages and notifies visitors that a Web site is coming soon. ”
The web page content generated by Network Solutions associated with both Complainant's and Respondent's respective web pages at “www.bankalhilal.com” and “www.alhilalbank.com” bear the same notices described in the preceding paragraph are attached as Exhibit 13 to the Response.
Respondent states that he has extensive experience in the banking industry, including Islamic banking, and registered the disputed domain names in good faith with the intention of using them for a proposed business venture, Al Hilal Bank, as shown above. Respondent further states that registration of the disputed domain names occurred before notice of this dispute, which was the filing of Complainant's Complaint. Respondent's demonstrable preparations to use the disputed domain names, before notice of the dispute, for a bona fide offering of banking services constitute a legitimate interest under paragraph 4(c)(i) of the Policy. See, e. g., Fleetstar Information Systems Ltd. v. Stephen Morris, WIPO Case No. D2001-0518 (finding respondent, who registered the domain name <fleetstar.com> “as a result of his background in the fleet-management industry for seven years”, had a legitimate interest in the domain name because he made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before any notice of the dispute); IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420 (finding respondent had a legitimate interest in the domain name <ikb.com> because he made demonstrable preparations to use the domain name before any notice of the dispute).
Respondent submits that he is not, as Complainant suggests, required under the UDRP to actively use the disputed domain names for his own website in order to demonstrate a legitimate interest in the domain names. There is no use requirement for domain name registrants under the UDRP or otherwise. Rather, the UDRP specifically allows registrants to prove a legitimate interest in the disputed domain name by showing preparations to use the domain name, as Respondent has done here. See, e.g., Planet Earth, Inc. v.Planetary Solutions, Inc., NAF Claim No. 94362 (the UDRP “does not require operation of a web site to prove good faith. Nor does it require a domain name to be a company name or to appear on any hard goods to be a valid filing.”)
Respondent further states that he is not required under the UDRP to own a business registration or a trademark application, as Complainant suggests in the Complaint, identical to the disputed domain names to demonstrate his legitimate interest (UDRP, paragraph 4(c)(i)). See also, e.g., eAuto, L.L.C. v.Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (holding that “[a] person or entity may legitimately register and use many domain names that are different from its corporate name”); CRS Technology Corporation v. Condenet, Inc., NAF Claim No. 93547 (holding “[a] person or entity may legitimately register and use many domain names that are different from its corporate or trade names”).
Respondent states that Respondent registered the disputed domain names in good faith on October 31, 2006, before Complainant was established, before Complainant or others speculated or publicly reported that Complainant proposed to open an Islamic bank in association with the name “Al Hilal Bank”, before Complainant began using that mark, and before Complainant filed for or registered the AL HILAL BANK trademarks.
Respondent further submits that in October 2006, when Respondent entered into discussions with potential business partners regarding the proposed online bank Al Hilal Bank and when he registered the disputed domain names on October 31, 2006, Complainant did not even exist. Complainant was not established until June 2007. Similarly, Complainant's trademark registrations provided as Annex E to its Complaint list various application and registration dates in 2007 and 2008, and thus all post-date Respondent's registration of the disputed domain names by many months or several years.
Respondent further submits that Complainant recognizing that it did not even exist and was not using the mark AL HILAL BANK at the time Respondent registered the disputed domain names, attempts to establish prior rights by asserting “pre-use publicity” in its Complaint that allegedly predates Respondent's registration of the disputed domain names on October 31, 2006. Specifically, Complainant alleges that it was “originally announced in 2006”, that Complainant “made headlines right at the outset back in 2006”, and that “speculators and banking professionals had been assessing the value in the domain name of Complainant at various Internet chat forums and the anticipated launch of Complainant['s bank] has been discussed widely in leading business magazines”. To support its allegations, Complainant attached as its Annexure F to its Complaint a printout of an Internet forum posted on the website “www.dubaisharetalk.com”, and attached as Annexure G to its Complaint a printout of an articles from Bloomberg.com, a copy of an article from the Arabian Business.com, and a copy of an article allegedly from the print edition of Kuwait Times.
Respondent submits that Complainant's assertions of speculation about Complainant opening an Islamic bank in association with the name AL HILAL BANK are not supported by its evidence because none of Complainant's evidence in its Annexures F and G to the Complaint is dated before Respondent registered the disputed domain names on October 31, 2006. Specifically: Complainant's Annexure F that clearly lists the dates of the forum posts as beginning in July 2007, more than eight months after Respondent registered the domain names. The Bloomberg.com article provided by Complainant in Annexure G lists a byline date of June 19 with no year provided, and lists the full date at the end of the article as June 19, 2008 more than nineteen months after Respondent registered the domain names. The Arabian Business.com article provided by Complainant in Annexure G lists the date of publication as January 17, 2008, more than fourteen months after Respondent registered the domain names. Complainant identifies the source of the article titled “Abu Dhabi to set up new Islamic bank”, in Annexure G to the Complaint, as the Kuwait Times provides a publication date of December 3, 2007, more than thirteen months after Respondent registered the domain names.
Respondent further submits that in sum, Complainant has provided no evidence that it has rights in the mark AL HILAL BANK that predate Respondent's registration of the disputed domain names. Respondent states this fact alone is fatal to Complainant's allegation of bad faith registration of the disputed domain names. As described in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (the “WIPO Overview”), bad faith cannot be found if the disputed domain name was registered before the complainant's trademark rights were established. Specifically, the WIPO Overview provides the consensus view as “[n]ormally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right”. The WIPO Overview notes that there is a limited exception under which bad faith could be found, specifically, “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights”. However, there are no facts in this case that meet that exception.
Respondent states that the facts of this case are entirely distinguishable from the nine cases cited by Complainant in its Complaint. In this case, Complainant's rights in the mark AL HILAL BANK do not predate Respondent's registration of the disputed domain names. As an initial matter, each of the following eight cases are distinguishable from this case because each case involved trademark rights that predated the registration of the disputed domain names. Moreover, these eight cases are further distinguishable for the reasons noted in the parentheticals discussed below. MADRID 2012, S.A., supra (finding for complainant in part because complainant's trademark applications for the 2M12 mark predated respondent's registration of the domain names <2m12.com>, <2m12.info>, and <2m12.org>; because “[r]espondent must have been aware that a second level domain name such as <madrid2012.com> is the most obvious domain name to represent Madrid's bid for the 2012 Olympic Games and, if Madrid should be elected for host city, to represent the 2012 Olympic Games themselves”; and because it “is extremely unlikely that two persons have the same idea at the same time and create the same sequence of letters in a period of just 6 days aiming at a similar purpose (use in connection with the city of Madrid and its bid). ”); Sears, Roebuck and Co., supra (finding for complainant in part because “given the fame of [c]omplainant's mark, [r]espondent could have not had a legitimate contemplated use for offering of goods and services at the [d]omain [n]ame [<searsroebuck.com>]”); Caterpillar Inc., supra (finding for complainant in part because respondent offered to sell the domain name <catmachines.com> and was “in the business of registering or acquiring domain names for the purpose of selling them, not for the purpose of carrying on business under any particular domain name”); SunFest of Palm Beach County, Inc., supra (finding for complainant in part because respondent registered the domain names <sunfest.com> and <sunfest.net> “with actual knowledge of the existence of the rights of [c]omplainant and with constructive knowledge of its registered trademarks”); N.C.P. Marketing Group, Inc., supra (finding for complainant in part because respondent offered to sell the domain names <taebotv.com> and <tae-botv.com>); Internet Billing Company Ltd., supra (finding for complainant and transferring the domain name <ibills.com> in part because respondent did not contest the allegations in the complaint); Big Dog Holdings, Inc.
dba Big Dog Sportswear, supra (finding for complainant and transferring the domain name <bigdog.com> in part because “[r]espondents have acted in clear violation of [c]omplainant's trademark rights. Moreover, [r]espondents have a pattern of registering multiple domain names which are the registered trademarks of others.”); McNeil Consumer Brands Inc v. Mirweb Solutions, WIPO Case No. D2000-0612 (finding for complainant and transferring the domain name <tylenol.org> in part because respondent concealed its identity).
Respondent further submits that the ninth case cited by Complainant, Thaigem Global Marketing Limited, supra, is also readily distinguishable from this case. First, the registration date for the domain name <thaigem.net> was not provided in that decision, so it is unclear whether the registration of the domain name predated the complainant's trademark rights as is clearly the case here. In addition, unlike this contested case, the decision in favor of the complainant in the Thaigem case was based on the respondent's failure to contest the allegations in the complaint, i.e., a default.
Respondent submits that Complainant has provided no evidence to support its allegations of use in bad faith, namely, its claim that Respondent has a bad-faith pattern of registering trademark-related domain names, and its claim that Respondent is “passively holding” the disputed domain names in bad faith. Respondent states that Complainant's contention that Respondent's registration of the disputed domain names constitutes a bad-faith pattern of registering trademark-related domain names has no merit. Respondent submits that he has shown conclusively that his registration and intended use of the three disputed domain names was in good faith. As demonstrated above, Respondent has the right to register and use the domain names because they relate to Respondent's business plans and a bona fide offering of services. Respondent also has the right to register multiple domain names in connection with his plans. Further, under the UDRP, the number of domain names owned by a particular registrant is not determinative of bad faith when the registrant proves that it has a legitimate right to his domain names, as Respondent has done here. See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 (finding the respondent's large number of domain names was not a bad-faith pattern because the respondent did not register the domain names to sell them to trademark owners (i.e., those with pre-existing rights) or to trade off of the trademark owners' goodwill).
Respondent submits that Complainant's contention that Respondent is “passively holding” the disputed domain names in bad faith has no merit. The fact that the registrar Network Solutions is currently using the domain names for “under construction” websites displaying links to third-party websites does not, as Complainant alleges, constitute Respondent's “passively holding” of the domain names in a “calculated attempt by respondent to prevent complainant from using its registered mark on the Internet”. Nor does it prove that “respondent's conduct is preventing the complainant (owner of the trademark or service mark) from reflecting its mark in a corresponding domain name.”
Respondent further submits he has not prevented Complainant from registering and using domain names reflecting its AL HILAL BANK mark, and Respondent's activities do not constitute a bad-faith use of the domain names. First, Complainant has registered the domain name <alhilalbank.ae>, and is using that domain name for its own website, as shown by the website printout attached as Exhibit 14 to the Response. Second, Complainant's domain names <bankalhilal.com>, <bankalhilal.net>, <bankalhalil.org>, and <alhilalbank.biz> are being used by Network Solutions for “under construction” websites virtually identical to the websites posted by Network Solutions at the disputed domain names. Because Complainant is allowing Network Solutions to use its own domain names for the same “under construction” websites, it cannot now complain that such use constitutes bad faith with respect to the disputed domain names.
Respondent submits that it has the right to use the disputed domain names for “under construction” websites during his preparations to use the domain names for his own websites because Respondent has shown conclusively that his registration and intended use of the domain names constitutes good faith. Respondent's rights in the domain names predate Complainant's rights in the AL HILAL BANK trademark. Further, Respondent has the right to use the domain names for “under construction” websites for a significant amount of time because, as noted above, the length of time needed to establish a bank, and in particular, an Islamic bank, is substantial. Finally, there are no use requirements for domain names under the UDRP or otherwise, let alone time limits for domain name registrants like Respondent who register domain names in good faith to use the domain names for active websites.
Paragraph 15(a) of the Rules instructs this 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”.
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which the complainant has rights.
Complainant is the owner of trademark registrations in the United Arab Emirates, Lebanon, and Morocco for the trademark AL HILAL BANK and AL HILAL BANK and design registered in relation to provision of Shariah-compliant banking services; banking services; financial affairs; etc. as more fully detailed in paragraph 4 above.
The earliest of Complainant's trademark registrations for the trademark AL HILAL BANK was March 28, 2008 more than one and a half years after the date of registration of the disputed domain names on October 31, 2006. The inquiry under paragraph 4(a) (i) of the Policy is limited to the issue as to whether the disputed domain name or names are identical or confusingly similar to Complainant's trademark. See, MADRID 2012, S.A., supra, where the Panel stated: “These trademarks are sufficient for the purposes of the Policy, paragraph 4 (a)(i), although it is noteworthy that they are quite recent and do not appear to predate the registration of the domain name in question. ”
The disputed domain names, <alhilalbank.com>, <alhilalbank.net>, and <alhilalbank.org> consist of Complainant's trademark AL HILAL BANK and one of the top level domain descriptors “.com”, “.net”, or “.org”. Numerous UDRP decisions under the Policy have held that a domain name comprised of a complainant's trademark is identical or confusingly similar to the complainant's trademark. WIPO Administrative Panels have also repeatedly held that the specific top level of the domain name such as “.org”, “.net”, or “.com” do not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net”, or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The Panel finds that Complainant has proven that the disputed domain names comprised of Complainant's trademark AL HILAL BANK in combination with the top level domain descriptors “.com”, “.net”, or “.org” are confusingly similar to Complainant's registered trademarks for or including AL HILAL BANK.
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Previous panels have recognized that it may be an impossible task to require a complainant to prove the negative that respondent has no rights or legitimate interests in the disputed domain name(s) when that proof resides within the knowledge of respondent. The previous UDRP panels have held that complainant is required to make out an initial prima facie case that respondent has no rights or legitimate interests in its domain name(s). Once the complainant has made out a prima facie case, respondent is required to demonstrate rights and legitimate interests in its domain name(s). The overall burden of proof remains with complainant. See, WIPO Overview, paragraph 2. 1.
In this case, Complainant has failed to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
The disputed domain names were registered by Respondent on October 31, 2006 more than seven months before Complainant was created in June 2007 by Royal Decree No. 21 of 2007.
Registration of Complainant's trademark AL HILAL BANK was apparently not applied for until November 26, 2007 at the earliest and not registered until 2008, more than one year after Respondent's registration of the disputed domain names, as shown more fully in paragraph 4 above.
While Complainant referred to announcements of the Al Hilal Bank making headlines at the outset back in 2006, none of the material filed by the Complaint referring to creation of the Al Hilal Bank or making reference to the Al Hilal Bank are dated earlier than March 2007.
On March 28, 2007, Respondent received an email having the subject line “www.alhilalbank.com” from a sender identifying himself as Mansour Al Mulla. The email read in part as follows; “I got your e-mail [address] from network solutions when I was searching for a domain name (subjectline). Can we discuss selling the domain name? I would really appreciate if you would send me a reply with how much you are asking. I intend to use it for a start-up finance company, but I have to make sure that the name is not going to make controversy; otherwise I have to re-think the name for this company”. Respondent declined Mr. Al Mulla's offer to buy the domain name.
A declaration filed by Respondent together with a copy of Khaleej Times online report suggests that, the individual named Mansour Al Mulla who sent the above-described email to Respondent may be one-and-the-same as Mansour Mohammed Al Mulla, a member-rapporteur of the Founders Committee constituted by the Abu Dhabi government and charged with setting up Complainant's company.
After sending Respondent the above-described email on March 28, 2007, Mansour Al Mulla registered the domain names <bankalhilal.com>,<bankalhilal.net>, and <bankalhilal.org> on April 9, 2007. Mansour Al Mulla also registered the domain name <alhilalbank.biz> on April 12, 2007. The four domain names are registered in the name of Mansour Al Mulla and are subject to privacy registration, such that no reference to Complainant is included in the WHOIS search results. These domain names are currently being used by the registrar, Network Solutions, for “under construction” websites with links to various commercial websites. WhoIs printouts and website printouts for these domain names are attached as Exhibit 11 to Response.
The email dated March 28, 2007 from Mansour Al Mulla to Respondent informing Respondent that Mansour Al Mulla was searching for a domain name when he found Respondent's domain name <alhilalbank.com> supports an inference that Complainant was seeking to determine the availability of a name including “Al Hilal” for a proposed Islamic bank in March of 2007. It is accepted practice to conduct thorough availability searches before selecting a trademark or corporate name including a proposed trademark. The subsequent registration of the domain names <bankalhilal.com>, <bankalhilal.net>, and <bankalhila.org> by Mansour Al Mulla on April 9, 2007 support a decision by Complainant to proceed to use a corporate name including “Al Hilal”.
The Panel finds from the evidence filed in this case that Respondent registered the disputed domain names on October 31, 2006:
(1) at least four months prior to any provided evidence that Complainant intended to open an Islamic bank in association with the name Al Hilal Bank;
(2) more than eight months prior to the creation of Complainant corporation by Royal Decree; and
(3) more than two years before Complainant filed its first trademark application for the trademark AL HILAL BANK.
As described in the WIPO Overview, bad faith cannot normally be found if the disputed domain name was registered before the complainant's trademark rights were established, subject to a limited exception under which bad faith could be found “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights”. However, the Panel finds that the available facts in this particular case do not support such an exception being made here.
The Panel finds that Complainant has failed to establish any trademark rights in the trademark AL HILAL BANK before Respondent registered the disputed domain names on October 31, 2008, and has on the provided record failed to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent herein relied on paragraph 4(c)(i) of the Policy to establish his rights to and legitimate interests in the disputed domain names. More particularly, Respondent submits that before any notice of the dispute he registered the disputed domain names for use in association with an online Internet bank offering Islamic banking services. Respondent submits that he has made demonstrable preparations to use the disputed domain names in association with online Islamic banking services prior to and since the registration of the disputed domain names on October 31, 2006.
The Policy, paragraph 4(c) sets out three illustrative circumstances as examples, which, if proved by Respondent, shall demonstrate his rights to or legitimate interests in the disputed domain names under paragraph 4 (a)(ii) of the Policy:
(i) before any notice to Respondent of the dispute, the use by Respondent of , or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent ( as an individual, business or other organization) has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service marks at issue.
The available record suggests that Respondent is (as he claims) a financial professional who points to an extensive background in the banking industry for more than 20 years and significant experience in Islamic banking services. Respondent also states that he is a founder of University Bancorp, Inc. (“University Bancorp”), a bank holding company, and has served as President and Chief Executive Officer of University Bancorp from 1988 to the present. Respondent also points out that he is the Chairman and President of University Bank, an FDIC-insured bank wholly owned by University Bancorp. University Bank is said to offer a full range of commercial and personal banking services, and manages a total of USD 5. 3 billion in assets. Respondent says he is also the Chairman of the following three subsidiaries of University Bank: (1) University Islamic Financial Corporation, an Islamic banking company; (2) University Insurance and Investment Services Inc., an insurance and investment agency; and (3) Midwest Loan Services, which specializes in the residential home mortgage subservicing business, and has provided supportive evidence to that effect (see University Bancorp's 2007 Annual Report, Ex. 1 to Response).
The Panel is on the provided record prepared to accept as plausible Respondent's claims that based on his success with Islamic banking with some online presence, Respondent began developing the concept of an online Islamic bank in 2003. In October 2006, as part of Respondent's development efforts, he traveled to Kuwait and met with Dr. Ali A. Al Howell of the Kuwaiti firm Sharkia-Eastern Holding Group of Companies regarding a proposed venture for a purely online bank. The name “Al Hilal Bank” was selected for this business because “Al Hilal” is the Arabic term for “crescent moon”, and the crescent moon has a favorable connotation in Arabic culture with its association as a primary symbol of Islam. On October 31, 2006, while in Kuwait, Respondent registered the disputed domain names, which reflect the name of the proposed bank, in anticipation that the domain names would be used for the bank's website (stated in a declaration of Respondent attached as Exhibit 4 to Response).
The Panel also accepts that in December 2006, Respondent again traveled to Kuwait, and met with Dr. Howell regarding the proposed Al Hilal Bank. Respondent (through Jove Corporation, another company of which he is Chairman and a shareholder) and Dr. Howell subsequently formed on December 22, 2006 a British Virgin Islands company named Al Sharkia-Hilal Company Ltd. (“Al Sharkia-Hilal”) to be the holding company for the Al Hilal Bank in each country. The name “Al Sharkia-Hilal” was chosen because it reflects the Sharkia portion of Dr. Howell's company and the Al Hilal portion of the proposed bank name Al Hilal Bank. “Sharkia” means “eastern” in Arabic. The term “bank” was not included in the holding company because the British Virgin Islands (like other jurisdictions) regulates terms included in company names, and “bank” is such a regulated term (Respondent's Declaration, Exhibit 4 to Response paragraph 10). A copy of the Certificate of Incorporation from the British Virgin Islands' Registrar of Corporate Affairs showing the incorporation of Al Sharkia-Hilal Company Ltd. is attached as Exhibit 6 to Response. A copy of the Certificate of Incumbency dated February 15, 2007 from the company's registered agent listing Mr. Ranzini and Dr. Howell as the directors of Al Sharkia-Hilal Company Ltd. is attached as Exhibit 7 to Response.
Respondent declared in a declaration pursuant to Section 28 U.S.C. §1746 that he has not yet used the disputed domain names for the website of Respondent's proposed Al Hilal Bank for a number of reasons. First, his Al Hilal Bank project is still in development. Second, the development and establishment of a bank, particularly a bank that offers Islamic banking services globally, is a process that requires a significant amount of time and resources. Third, Respondent is in negotiations with a group that has Islamic banking activities in several nations overseas to acquire a stake in University Bank's Islamic banking operations, and while they are interested in expanding operations globally through the Internet these plans are predicated upon successfully concluding their initial acquisition. Lastly, the public presence and public branding including the website of such a global Islamic bank is critical and would be the last part of the business plan to be executed once the bank is formed.
The Panel notes that the disputed domain names are being used by the registrar, Network Solutions, for “under construction” websites with links to various commercial websites, as shown by the website printouts attached as Exhibit 12 to the Response. These websites, like all such websites posted by Network Solutions, display a link, “Why am I seeing this ‘Under Construction' page?”, that connects to a window explaining that “This ‘Under Construction' page is an automatically generated placeholder Web page for a domain that is not yet attached to an active Web site. This page replaces the ‘Not Found' error pages and notifies visitors that a Web site is coming soon. ”
The web page content generated by Network Solutions associated with both Complainant's and Respondent's respective web pages at “www.alhilalbank.com” and “bankalhalil.com” bear the same notices described in the preceding paragraph are attached as Exhibit 13 to the Response.
The Panel finds on the present record that Respondent has shown extensive experience in the banking industry, including Islamic banking, and demonstrated to this Panel's satisfaction that he registered the disputed domain names in good faith with the intention of using them for a proposed online business venture, Al Hilal Bank. The registration of the disputed domain names occurred before notice of the dispute. Respondent's demonstrable preparations to use the disputed domain names in association with online Islamic banking services, demonstrates a legitimate interest under Section 4(c)(i) of the UDRP. See, e.g., Fleetstar Information Systems Ltd., supra; IKB Deutsche Industriebank AG, supra.
The evidence filed in this case shows that the web pages currently associated with the disputed domain names are “under construction” pages generated by the Registrar Network Solutions. Complainant submits that that such activity does not amount to “use” of the disputed domain names for any purpose and thus Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4 (c)(i) of the Policy recognizes that legitimate interest in a domain name may be demonstrated by demonstrable preparations to use a domain name in connection with a bona fide offering of goods or services. For the reasons expressed immediately above Respondent has on the present record established demonstrable preparations to use the disputed domain names in good faith which supports the finding that Respondent has established legitimate interests in the disputed domain names. See, e.g., Planet Earth, Inc., supra).
Complainant argues that Respondent's non-use of the disputed domain names and non-use of a trademark including the words of the domain name should be considered as evidence of a lack of a right or legitimate interest in the disputed domain names. Respondent is not required under the UDRP to own a business registration or a trademark application, identical to his disputed domain names to demonstrate his legitimate interest; evidence of genuine demonstrable preparations (as here) would normally suffice (UDRP, Section 4(c)(i)). See, e.g., eAuto, L.L.C., supra (holding that “[a] person or entity may legitimately register and use many domain names that are different from its corporate name.”); CRS Technology Corporation, supra (holding “[a] person or entity may legitimately register and use many domain names that are different from its corporate or trade names”).
The Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names were registered in bad faith.
The disputed domain names were registered by Respondent on October 31, 2006 more than seven months before Complainant was created in June 2007 by Royal Decree No. 21 of 2007.
Complainant's trademark AL HILAL BANK was not applied for until November 26, 2007 at the earliest and not registered until 2008, more than one year after respondent's registration of the disputed domain names, as shown more fully in paragraph 4 above.
While Complainant referred to announcements of the Al Hilal Bank making headlines at the outset back in 2006, none of the material filed by the Complaint referring to creation of the Al Hilal Bank or making reference to the Al Hilal Bank are dated earlier than March 2007.
Complainant has on the provided record failed to satisfy the Panel that Respondent was clearly aware of the complainant at the time the disputed domain names were registered, and that the clear aim of the registration was to take advantage of confusion between the domain names and any potential Complainant's rights. The facts in this case do not support a finding of bad faith registration.
In light of the above, the Panel finds that Complainant has in this proceeding failed to prove that Respondent registered the disputed domain names in bad faith.
As the Panel finds that Complainant has not proven that Respondent has no rights or legitimate interests in the disputed domain names and has not proven that Respondent registered the disputed domain names in bad faith, the Panel does not find it necessary to decide the issue of use in bad faith.
For all the foregoing reasons, the Complaint is denied.
Ross Carson | |
Pravin Anand | Sandra J. Franklin |
Dated: April 6 ,2009