The Complainant is Hariri Foundation of Maryland, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is PARSDATA Corporation of London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <haririgroup.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2009. On November 26, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On November 27, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on December 30, 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 Hariri Foundation was established in 1985 and has offices in Paris, London and Washington. It is the United States (“U.S.”) counterpart to the Rafik Hariri Foundation (the Lebanese Foundation) established nearly 30 years ago by the former Prime Minister of Lebanon. It is a non-partisan, non-sectarian and non-profit foundation dedicated to the continued development of Lebanon and Middle Eastern interests in education, the transfer of knowledge and technology, public affairs and cultural enrichment. The Complainant's services complement the Lebanese Foundation and to date has sponsored over 33,000 Lebanese students throughout North America for academic degrees and specialised training in fields of study based on the development and other needs of Lebanon and the Middle East. The Complainant promotes its HARIRI marks through Foundation brochures, newsletters, websites, stationery and informational videos.
For the purposes of the Complaint the U.S. Foundation acts on behalf of Hariri Interests, Inc., the registrant of several HARIRI-formative marks throughout the world.
The Foundation and its affiliates have registered several marks incorporating the name “Hariri.” These include registrations with the Republic of Lebanon's Ministry of Economy and Trade for HARIRI CANADIAN and RAFIK HARIRI FOUNDATION for use in connection with services provided by the Lebanese Foundation. The former mark was registered in 2005 and the latter in 2006. The HARIRI marks were registered by Hariri Interests, Inc., in 2008 for use by both the Foundation and/or its affiliates in connection with investment management and real estate management services in Lebanon; career counselling services, investment management services, real estate management services, and education services in France; and career advisory services, career information and advisory services (other than educational and training advice), career planning services; career counseling, financial services, investment management and real estate investment services, providing of training; educational and training advice, and educational and training exchange programs in the United Kingdom.
The disputed domain name was originally registered in 2003. Subsequently, it has changed hands many times and was registered by the Respondent on June 23, 2007. The Internic website indicates that the disputed domain name was last updated on November 25, 2009.
On March 26, 2009 the Complainant's representative wrote to the Respondent requesting it refrain from using the disputed domain name and to transfer it to the Complainant. The letter was returned as the Respondent's nominated mailing address did not exist. The Respondent did not reply to the letter sent by email on the same day.
The Complainant contends that the Foundation is an international organization and its HARIRI marks have become famous throughout the United States, Lebanon, Europe and the world and that the HARIRI marks have acquired secondary meaning. As a result, the public associates the Foundation's educational, eleemosynary, philanthropic, and humanitarian services exclusively with the HARIRI marks. The unregistered HARIRI marks, therefore, function as common law service marks which, like their registered counterparts, similarly qualify for protection under the Policy.
The Complainant contends that the Respondent is a bulk registrant and reseller of domain names, many of which incorporate the famous marks of others, for example, <googlehacks.us>, <googlemarket.org>, <googlegallery.com>, <inyoutube.com>, <farsyoutube.com>, <yahoo260.com>, <yahooirani.com>, and <msnirani.com>, among others (infringing the GOOGLE, YAHOO, and MSN marks, respectively). Nearly all of the domain names registered by the Respondent are comprised of words and phrases other than the Respondent's corporate name, PARSDATA. The Complainant also believes that the Respondent runs or is otherwise affiliated with Parsdomains.com, a domain name reseller that owns and offers for sale domain names. According to the Complainant, the records maintained by the Internet archive indicate that the domain name associated with the Respondent's official website, “www.parsdata.com”, simply resolves to “www.parsdomains.com”.
The Complainant contends that the Respondent does not have any connection or affiliation with the Hariri Foundation or any of its many services, programs, scholarships, organisations, buildings or awards associated with the HARIRI marks. Also, the Respondent does not have any connection or affiliation with Hariri Interests, Inc., the Hariri Group or any other organisation affiliated with these groups.
The Complainant states that at no time did the Respondent receive any licence, authorisation or consent, expressed or implied, to use the HARIRI marks in a domain name or in any other manner. To the best of the Complainant's knowledge the Respondent does not offer any goods or services in association with the word “Hariri”. The Complainant contends that it is unlikely that anyone associated with the Respondent bears the Hariri surname where even in Lebanon it is not a common surname.
The Complainant's research indicates the Respondent has not posted a website in association with the disputed domain name since registering it in June 2007. In fact, it has remained unused for over two years, evidencing bad faith, and it is not being used for any legitimate business reason. The passive holding of a domain name gives rise to a presumption that the Respondent lacks rights and legitimate interests in the domain name because it is not being used in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate, noncommercial or fair use pursuant to Policy 4(c)(iii).
The Complainant contends that an Internet user having arrived at the Respondent's inactive website could be frustrated and confused at not having reached an official website maintained by one of the Hariri entities or groups. Accordingly, the Respondent is taking advantage of this Internet user behavior pattern for its own commercial advantage. This type of “initial interest confusion” or diversion of traffic is impermissible because the infringer thus capitalizes wrongfully on a trademark owner's goodwill in its mark to divert Internet traffic.
The Complainant contends that the Respondent has registered the disputed domain name in bad faith because both the Respondent and its affiliate Parsdomains.com have established a pattern of registering domain names which infringe the famous marks of others.
Citing AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276, the Complainant considers the Respondent must have expected that any use of the disputed domain name would cause harm to the Foundation because the name is so “obviously indicative” of the Foundation's services that the Respondent's use of this domain name would “inevitably lead to confusion of some kind.”
Finally, the Complainant considers that the Respondent's renewal of the domain name registration after receiving its representative's cease and desist email and the provision of a fake address and telephone number in the WhoIs records for the disputed domain name (and thousands of other domain names) further illustrates bad faith.
The Respondent did not reply to the Complainant's contentions.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant provided evidence that its affiliates have registered rights in the trademarks HARIRI GROUP, HARIRI CANADIAN and RAFIK HARIRI FOUNDATION.
The disputed domain name consists of the Complainant's trademark in full together with the suffix gTLD “.com”. As previously held by numerous panels the suffix “.com” only indicates that the domain name is registered under this gTLD and is not distinctive.
In the first instance, the Panel has considered whether the Complainant had common law rights in the mark HARIRI that pre-dated the registration by the Respondent in 2007. The Complainant provided evidence (including financial statements and various independent articles) that indicates that the Hariri Foundation has been operating since the mid-1980s. In Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 the panel stated “[i]t is well established […] that the concept of rights in a trademark does not necessarily mean a complainant must own a registered trademark. Common law rights may be sufficient to support a domain name complaint under the Policy”.
Also, it is the consensus view of prior WIPO panels that a complainant may successfully assert common law or unregistered service mark rights where, as here, the Complainant shows “that the name has become a distinctive identifier associated with the complainant or its goods and services.” See WIPO Overview of WIPO Views on Selected UDRP Questions, paragraph 1.7. Based on the evidence provided, the Panel concludes that the Complainant has unregistered trade mark rights in the mark HARIRI that predate both the original registration and the Respondent's renewal, for purposes of the Policy, of the disputed domain name.
In the context of the established unregistered trade mark rights the Panel considers that the addition of the dictionary word “group” to the Complainant's mark does not diminish the distinctiveness of the mark. Also, it has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
With respect to the mark HARIRI CANADIAN the disputed domain name shares the same dominant portion, namely the distinctive word “Hariri”. The substitution of the word “Canadian” by “group” in the domain name does not diminish the distinctiveness of the Hariri portion of the domain name. The addition of the word “Group” to “Hariri” fails to dispel such confusion (see Burberry Limited v. Domain Admin, WIPO Case No. D2009-0703 where the panel stated that “[i]t is now very well-established . . . that a minor variation, such as adding . . . generic or highly descriptive words to a mark, is usually insufficient . . . to avoid user confusion. Here, adding such a word, that being ‘GROUP' . . . clearly resulted in such a minor variation.”). Similarly, this Panel considers the word “group” in the disputed domain name a minor variation and would not avoid user confusion. The Panel finds the disputed domain name confusingly similar to the Complainant's registered mark HARIRI CANADIAN.
The similarity between the Complainant's trademark RAFIK HARIRI FOUNDATION and the disputed domain name may be less evident but does not need to be decided upon in view of the Panel's findings of confusing similarity with respect to the Complainant's unregistered rights in the trademark HARIRI and its registered HARIRI CANADIAN mark.
The Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant's unregistered rights in the trademark HARIRI and its registered HARIRI CANADIAN mark. The Complainant therefore has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. In such a situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to register a domain name that contains the Complainant's HARIRI trademark in its entirety without authorisation by the Complainant. There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Moreover, the Complainant has denied providing any authorisation at all.
There is no evidence before the Panel that the Respondent is commonly known by the disputed domain name or that the Respondent is making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to having received notice of this dispute.
It is clear that the Respondent is not using the domain name. The failure to use a disputed domain name in any way may in certain circumstances, lead to a finding of no rights and legitimate use (see Sport Supply Group, Inc. v. Kendell Lang, WIPO Case No. D2004-0829.
Based on the evidence before the Panel and the conduct of the Respondent, the Panel finds the Respondent lacks rights or legitimate interests in the disputed domain name and consequently has not demonstrated that it has met the requirements of paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds that the Complainant has satisfied the second element of the Policy.
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that the Policy does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Although the Respondent is not the original registrant of the disputed domain name, the Panel accepts its acquisition as constituting registration for the purposes of the Policy (see MC Enterprises v. Mark Segal(Namegiant.com), WIPO Case No. D2005-1270).
The Complainant has provided considerable evidence that the Respondent and its affiliates have established a pattern of registering domain names which infringe upon the famous rights of others. Such action evidences bad faith registration.
The Respondent's selection of the disputed domain name incorporating the Complainant's trademark cannot be considered by the Panel to be other than a deliberate action. The Complainant provided evidence that the surname Hariri is rare in both the U.S. and in the United Kingdom where the Respondent allegedly resides. The mark HARIRI has no apparent dictionary meaning and it is improbable that the Respondent would come up with the name independently. In the Panel's view the only reason the Respondent, who sells domain names commercially, wanted to register the disputed domain name was to gain some sort of advantage in relation to the Complainant's reputation and goodwill in its trademark.
In the Panel's view, bad faith is also apparent in the Respondent's passive holding of the disputed domain name, when seen in combination with its having no rights or legitimate interests in the domain name and the strong likelihood of the Respondent having knowledge of the Complainant's reputation. Also, bad faith is evidenced by the Respondent's apparent renewal on November 25, 2009 of the disputed domain name after the Complainant had issued a cease and desist letter (see Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172.
On the basis of the above and when considered together with the fact that the Respondent has failed to provide complete and accurate WhoIs details, such as its address and contact numbers, the Panel is satisfied that the Complainant has proven that the Respondent's conduct falls within paragraph 4(b) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <haririgroup.com> be transferred to the Complainant.
Dated: January 13, 2010