WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar
Case No. D2011-0128
1. The Parties
The Complainant is Olayan Investments Company of Furstentum, Liechtenstein, represented by Shearman & Sterling LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Anthono Maka of Lagos, Nigeria, Alahaji, Koko of Kano, Nigeria, Direct investment future company, ofer bahar of London, United Kingdom of Great Britain and Northern Ireland.
2. The disputed domain names and Registrar
The disputed domain names <olanyagroup-sa.com>, <olayangroup-sa.com>, and <olayansa.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2011. On January 26 and 27, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names and a reminder. On January 30, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response, confirming that the Respondents are 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 Respondents of the Complaint, and the proceedings commenced on February 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on March 10, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant has indicated in the Complaint that legal proceedings have been commenced in relation to fraudulent activities involving the use of the disputed domain names. The Complainant states that an application has been made in the United States of America against unknown defendants in relation to the activities described in the Complaint, seeking injunctions to stop them continuing such activities and damages for, amongst other things, trademarks infringement; subpoenas have been subsequently issued against various Internet service providers seeking information about the identity of the defendants in order to continue the legal proceedings against them. The Complainant also informs the Panel that a Court Order was obtained in England in December 2010 against a number of telephone companies with whom the persons involved in these activities have telephone service accounts, obliging such companies to divulge information concerning the holders of these accounts in order to trace and prosecute them in relation to the activities described in the Complaint.
Paragraph 18(a) of the Rules gives the Panel discretion to suspend or terminate the UDRP proceeding where, as here, the disputed domain names are the subject of other legal proceedings:
“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”.
In the case at hand, since this administrative proceeding under the Policy concerns only control of the disputed domain names and not any of the other remedies sought in the litigations before the English and the American Courts, the Panel deems appropriate to proceed to a decision.
4. Factual Background
The Complainant is the parent company of the Olayan Group, a Saudi Arabian-based multinational enterprise which is engaged in manufacturing and distribution services and investment activities.
The Complainant is the owner of several trademark registrations for OLAYAN, including the following:
United Kingdom Trademark registration No. 2402456 for OLAYAN (word mark), filed on September 26, 2005, in classes 35 and 39;
United Kingdom Trademark registration No. 2402431 for OLAYAN (figurative mark), filed on September 26, 2005, in classes 35 and 39;
Community Trademark registration No. 4653151 for OLAYAN (word mark), filed on September 26, 2005, in classes 35 and 39;
Community Trademark registration No. 8208423 for OLAYAN (word mark), filed on April 8, 2009 in class 36;
Community Trademark registration No. 4659215 for OLAYAN (figurative mark), filed on September 26, 2005, in class 35;
Community Trademark registration No. 8208456 for OLAYAN (figurative mark), filed on April 8, 2009 in classes 36 and 39.
The Complainant is also the owner of the domain name <olayan.com>, registered on March 6, 1996.
The disputed domain names <olayangroup-sa.com>, <olanyagroup-sa.com> and <olayansa.com> were registered, respectively, on September 29, 2010, on August 25, 2010 and on November 13, 2010. All of them are not redirected to active websites.
5. Parties’ Contentions
The Complainant states that the Olayan Group was founded in 1947 by its first Chairman Suliman Saleh Olayan and comprises approximately 50 companies and affiliated entities worldwide, which are engaged in distribution and manufacturing services and investment activities. The Complainant points out that the Olayan Group has earned an unimpeachable reputation for conducting its business with the greatest integrity and emphasizes that its name Olayan, which has been subject to the above-mentioned trademark registrations, is one of its most valuable assets.
The Complainant informs the Panel that the Complainant’s employees use email addresses based on the domain name <olayangroup.com>.
The Complainant contends that the disputed domain names <olayangroup-sa.com>, <olanyagroup-sa.com> and <olayansa.com> are confusingly similar to trademarks and the domain names in which the Complainant has rights as they reproduce the trademark OLAYAN with the addition of the combination of letters “sa” which would the acronym of Saudi Arabia, the country of origin of the Complainant, where the greatest part of the Complainant’s business is still performed.
With reference to rights or legitimate interests, the Complainant states that the Respondents are not commonly known by the disputed domain names and are not using the disputed domain names in connection with a bona fide offering of goods or services. The Complainant highlights that it has not authorized the registration or use of the disputed domain names by any of the Respondents and that they are not making a legitimate noncommercial or fair use of the disputed domain names.
With reference to the circumstances evidencing bad faith, the Complainant indicates that email addresses incorporating the disputed domain names have been used since September 2010 to send emails in which the senders represented themselves as officers or employees of the Complainant’s group in order to fraudulently obtain sums of money from various users. The Complainant attaches to the Complaint some of the mentioned emails and states that, at least in one case, a person was persuaded to correspond USD 14,000 without being able to recover the sum paid.
The Complainant underlines that the first Respondent Anthono Maka has been involved in “allegedly fraudulent activities” together with another person cited in the correspondence, Kelvin Anene, and that the third Respondent Ofer Bahar is also the registrant of another domain name <ramadanfinance.co.uk> used in connection with fraudulent actions.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several trademark registrations such as OLAYAN.
The Panel finds that the disputed domain names <olayangroup-sa.com>, <olanyagroup-sa.com> and <olayansa.com> are confusingly similar to the registered trademark OLAYAN owned by the Complainant, since the mere addition of the two letters “s” and “a”, the misspelling of the word “olayan” with “olanya” and the addition of the generic term “group” are not sufficient to exclude the confusingly similarity.
In ACCOR v. I&M Raamatupidamise O/Accora Consult OÜ ( WIPO Case No. D2006-0650), the panel stated “The Domain Name at issue reproduces entirely the mark ACCOR with the mere addition of the single letter ‘a’ which moreover makes no difference with the Complainant’s trademarks and may also be interpreted to be a misspelled suffix of ACCOR. Indeed the single letter “a” is an obvious attempt to “typosquat” the disputed domain name and is insufficient to avoid confusion.”
See also Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556: “The Panel believes further that Respondent has intentionally misspelled Complainant’s trademark in order to attract the flow of Internet users who have mistyped Complainant’s URL address enabling Respondent accordingly to increase the traffic to its website ‘www.vlovo.com’ and derive more revenues as a result. Such practice is known as “typosquatting” and has been clearly condemned in various panelists’ decisions”.
With reference to the addition of a generic term, see, i.a., the following decisions, stating that the addition of generic or descriptive terms to a trademark is not a distinguishing feature: Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondents’ rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names in order to shift the burden of evidence on the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondents have not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainant. The Respondents are not licensees of the Complainant, nor have the Respondents otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondents are commonly known by the disputed domain names.
The disputed domain names have not been used in connection with active websites. However, the Complainant has attached to the Complaint copies of the fraudulent emails sent by the Respondents or other persons in control of the disputed domain names. According to this evidence, the Respondents and/or such persons misrepresented themselves as “Khaled Olayan”, the real chairman of the Olayan Group, and as “Nadim Tabbara”, the Complainant’s CFO.
For example, a proposal for a 18 millions dollars loan 4% for 5 years was made through the email address k[ ].o[ ]@olayangroup-sa.com by a person signing as K. Olayan who indicated to refer to N. Tabbara at the address n[ ]_t[ ]@olayangroup-sa.com for “modalities”: the alleged Mr. Tabbara indicated that a surety bond was necessary to get a loan and indicated to contact a surety agent named K. Anene at the address k[ ].a[ ]@underwriters-ae.com. K. Anene, already reported on other websites for his involvement in scam activities, claimed to be an agent for the insurance company A. Ahlia and instructed to pay a sum of USD 15,200 directly to loan officer instead of an insurance company. The Complainant alleges that similar proposals for investments have also been made trough the email addresses k[ ].o[ ]@olanyagroup-sa.com and k[ ]@olayansa.com.
Such use of the disputed domain names cannot be evidence of any rights or legitimate interests. See, along these lines, Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367 (“Obviously, this ‘advance-fee scam’ cannot be evidence of any rights or legitimate interests in the domain name”) and The Prudential Assurance Company Limited v. Prudential Securities Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561 (“the only proved use of the name ‘Prudential Securities Limited’ by the Respondent, is the use of that name in the August 28 email and in other similar emails. For reasons set out in the next part of this decision, that use appears to have been fraudulent − the Respondent has effectively masqueraded as a subsidiary or operating division of the Complainant's group. Such a use could never form a basis for a claim to a right or legitimate interest, and there is no other proved use of the name ‘Prudential Securities’ by the Respondent which might have formed the basis for a ‘commonly known by' defense under paragraph 4(c)(ii) of the Policy”).
Thus, in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Complainant has provided evidence that the disputed domain names have been incorporated in email addresses which have been used by the Respondents or other persons in control of the disputed domain names to commit fraudulent actions by impersonating the Complainant’s representatives. The Complainant has also asserted (without reply from the Respondent) that the first and the third Respondents were involved in other fraudulent activities. The Panel finds that the Respondents probably had the Complainant’s trademark in mind at the time of the registration and that the disputed domain names were, therefore, registered by the Respondents in bad faith.
In light of Internet users’ presumption of trustworthiness in domain names consisting in or incorporating registered trademarks, the Panel finds that, when domain names are identical or confusingly similar to the trademarks of companies providing financial services, the potential risks posed by scam activities must be considered circumstances evidencing bad faith. In fact, scam communications received from email accounts based on such domain names are much more misleading to recipients than identical emails received from accounts based on domain names not related to trademarks of financial institutions. Furthermore, in the case at hand, the Complainant has provided evidence that the Respondents have already used the domain names for fraudulent purposes.
The Panel also finds paragraph 4(b)(iv) applicable in this case since, as stated in See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, supra, although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an “online location”.
As an additional circumstance evidencing bad faith, the Panel notes that there has been no Response and, in this case, as stated in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <olanyagroup-sa.com>, <olayangroup-sa.com>, and <olayansa.com> be transferred to the Complainant.
Dated: March 28, 2011