WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Olayan Investments Company Establishment v. Namesco Limited d/b/a Globaldomainprivacy.net / Jeffrey Nicholson
Case No. D2012-1303
1. The Parties
The Complainant is Olayan Investments Company Establishment of Furstentum, Liechtenstein, represented by Shearman & Sterling (London) LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Namesco Limited d/b/a Globaldomainprivacy.net of Worcester, United Kingdom of Great Britain and Northern Ireland / Jeffrey Nicholson of Hattiesburg, United States of America.
2. The Domain Name and Registrar
The disputed domain name <oolayan.com> is registered with Register.it SpA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2012. On June 26, 2012, the Center transmitted by email to Register.it SpA a request for registrar verification in connection with the disputed domain name. On June 27, 2012, Register.it SpA transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 2, 2012.
The Center verified that the Complaint together with the amended 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 July 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2012.
The Center appointed J. Nelson Landry as the sole panelist in this matter on August 3, 2012. 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.
4. Factual Background
The facts and circumstances herein are not contested since the Respondent did not file any Response or communication subsequent to the Notification of the Complaint.
The Complainant is a Liechtenstein company which is the parent company of the Olayan Group of companies, a multinational enterprise founded in 1947 and based in Saudi Arabia. Its first chairman was Suliman Saleh Olayan. The Olayan Group, its about 50 companies and affiliated entities worldwide are engaged in a range of distribution, manufacturing, services and investments activities which operate under the trademark OLAYAN. The Complainant is the owner of several registrations for the trademark OLAYAN, including:
- 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 (herein the “OLAYAN word Trademarks”, the “OLAYAN figurative Trademarks” or collectively the “OLAYAN Trademarks”).
The Complainant is also the owner of the domain name <olayan.com> registered on March 6, 1996.
The disputed domain name was registered of May 5, 2012 with Register.it S.p.A. of Florence, Italy.
The Complainant has not authorized the Respondent to use any of its OLAYAN Trademarks in any way or incorporate any of said Trademarks within a domain name, including the disputed domain name.
The disputed domain name is not directed to any active website.
The OLAYAN trademarks were involved previously in four different UDRP proceedings:
1. Olayan Investments Company v. Anthonomaka, Alahaji, Koko, Direct Investment future company, ofer bahar (<olanyagroup-sa.com>, <olayangroup-sa.com> and <olayansa.com>), WIPO Case No. D2011-0128, wherein the registrar was Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com;
2. Olayan Investments Company v. Richard Arteaga and Christine Cochrum, (<khaled--olayan.com> and <0layangroup.com>) WIPO Case No. D2011-1342, wherein the registrar was Register.it S.p.A.;
3. Olayan Investments Company v. Janice Carver, (<0layan.com>) WIPO Case No. D2011-1623, wherein the registrar was Register.it S.p.A.;
4. Olayan Investments Company v. Janice Carver, (<o1ayan.com>) WIPO Case No. D2012-0212, wherein the registrar was Register.it S.p.A.
The Complainant has produced as evidence the complaint and the panel decision in each of the said four UDRP proceedings mentioned above and particularly noted that in the second, third and fourth complaints, a fraudulent email was produced, each email contained the subject-line “let’s get started” and each had the name of “khaled olayan”, president of Olayan Group as the originator and the text of each email was in a wording almost identical to that cited herein below.
Subsequent to the first unauthorized registration of a domain name incorporating the OLAYAN trademarks, within the four UDRP cases hereinabove, the Complainant posted on the first page of its website “www.olayan.com”, a warning entitled “misuse of olayan name”, which notice read:
“It has come to our attention that the Olayan name and corporate logo have been misused by unauthorized individuals for fraudulent purposes. The Olayan Group® takes these matters extremely seriously. We are working with authorities to investigate such scams and prosecute the perpetrators.
If you receive a communication from the Olayan Group, its principals, or persons claiming to represent them, and you think it is suspicious, please contact: [ ]@olayangroup.com.”
In June 2012, the Complainant received by email two inquiries from the president of two United States companies, two of many recipients of a similar email from the same source, each inquiring about its legitimacy. The email (produced as Annex 4 to the Complaint) reads as follows:
“From: Khaled Olayan <[ ]@oolayan.com>
Sent: Mon, June 4, 2012 3:10:43 AM
Subject: Let's get started
Regards to adverts of possible investments, I wish to bring to your notice our interest to partner with your company for a great business prospect.
Kindly furnish me with a business plan and proposal for a Loan & Joint venture/ partnership with you/your company.
We look forward to going into a good business relationship with your company.
5. Parties’ Contentions
The Complainant having stated that it is the parent company of a large group of companies and entities in operation since 1947 represents that it is the owner of trademark rights in the OLAYAN Trademarks, in word and figurative forms, registered in several countries and further represents that pursuant to its activities it has achieved a reputation of integrity and that its name and OLAYAN Trademarks represent valuable assets.
The Complainant contends that the disputed domain name is confusingly similar to the OLAYAN Trademarks where the addition of a single letter “o” and of the suffix “.com” to the OLAYAN word Trademarks does not diminish the confusing similarity between the said Trademarks and the disputed domain name.
The Complainant further contends that it has never authorized the Respondent to use its OLAYAN Trademarks or to incorporate any of them, as such or modified, in the disputed domain name and further states that, pursuant to searches, it is not aware of the Respondent having been commonly known by the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or legitimate services.
The Complainant represents that it has no knowledge that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name but to the contrary, the Complainant contends that the Respondent is using the disputed domain name to engage in fraudulent activities.
According to the Complainant, in early June 2012, it received email information from at least two different persons informing it that each had received an email with addresses incorporating the disputed domain name, inviting the recipient to engage in a business relationship and the sender representing himself as an officer or employee of the Complainant (Annex 4 to the Complaint).
The Complainant, on the basis of this evidence, concludes that the disputed domain name, as already observed in four earlier UDRP proceedings, has been registered and used in bad faith by the Respondent whereby the disputed domain name was used in an attempt to mislead Internet users into believing that, as recipients of those fraudulent invitations to engage in business, they were dealing with the Complainant or other members of the Complainant group.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent 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.
A. Identical or Confusingly Similar
The Panel has carefully examined the evidence provided by the Complainant in respect of its entitlement to the OLAYAN Trademarks in a word or a figurative trademark registered in different countries as well as a Community Trademark and finds that the Complainant has rights in the OLAYAN Trademarks.
The disputed domain name incorporates the whole of the OLAYAN word Trademark to which there has been added a letter “o” and the generic Top-Level Domain (“gTLD”) suffix “.com”. It is long established in numerous UDRP decisions that such additions do not diminish in any way the confusing similarity of the disputed domain name with the said Complainant’s OLAYAN word Trademark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s OLAYAN Trademarks within the meaning of paragraph 4(a)(i) of the Policy.
The first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of any of its OLAYAN Trademarks.
Furthermore, as shown in the unchallenged evidence adduced by the Complainant, the Respondent has never engaged in any legitimate business under the Complainant’s Trademark or the disputed domain name.
Not only the Respondent has not rebutted the prima facie evidence of the Complainant in showing that it was not engaged in any legitimate noncommercial activities, the Complainant has also clearly shown with unchallenged evidence how the Respondent is using the disputed domain name in bad faith for objectionable commercial activities.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
The second criterion of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
An analysis of the evidence in this quite special case, in the Panel’s view, brings into play grounds (iii) and (iv) under paragraph 4(b) of the Policy in that the activities of the Respondent certainly disrupt the business of the Complainant and do create a likelihood of confusion with the Complainant’s OLAYAN Trademarks as to at least the source or endorsement of the Respondent’s activities and in particular its fraudulent business proposal to the recipients of the email communication under the alleged representations of the president of the Complainant who denies being involved in these fraudulent activities.
Although the Respondent did not have an active website at the address of the disputed domain name, as held in earlier UDRP decisions, the Respondent has used the disputed domain name in email addresses to send scam emails and to solicit a reply to an online location. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367 and Olayan Investments Company v. AnthonoMaka, Alahaji, Koko, Direct investment future company, ofer bahar, supra.
This Panel, similarly to the other panels in the four previous UDRP cases and decisions involving the same Complainant, is of the view that the Respondent was most likely, if not certainly, aware of the existence of the OLAYAN Trademarks of the Complainant. The term OLAYAN is of the nature of an invented name rather than a generic, descriptive or geographical term and furthermore, the nature of the email making an unauthorized use of the Complainant’s domain name and address, company name and the name of its chairman, confirms the awareness by the Respondent of the OLAYAN name and Trademark in said usages.
This Panel, despite the fact that this is the fifth instance of the use of a confusing domain name incorporating the OLAYAN Trademarks by different respondents except for the third and fourth cases, in which the named respondent was the same individual, considers that it is most likely that there is the same bad faith master mind behind each of the five cases involving the registrations of several domain names confusingly similar to the OLAYAN Trademarks. Only in the first case, the respondent is not the name of a United States person with an address in the same country. The text of the fraudulent email sent to prospective Internet users is almost identical in each of the five instances and finally, except for the first registration involving three confusingly similar domain names, it is the same Registrar, namely Register.it S.p.A. of Florence, Italy. In this Panel’s view, there are too many analogies to be a coincidence of activities by different respondents operating in their respective independent way.
The Panel agrees with the respective panels in the second and fourth cases involving the same Complainant and adopts their citation from The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561: “It goes without saying that a Domain Name which has been acquired and used for the purpose of perpetrating a fraud has been acquired and used in bad faith”.
While the panel in the fourth case saw the indication of a pattern of conduct of the part of the respondent, the same respondent as in the third case, this Panel is of the view that the facts in the present case also indicate a pattern of conduct of the part of an unidentified person operating under the name of the respondent in the four previous cases involving the present Complainant and in the present case.
The Panel is accordingly satisfied that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b) of the Policy.
The third criterion of the Policy has been met.
The Panel concludes that:
(a) the disputed domain name <oolayan.com> is confusingly similar to the Complainant’s OLAYAN Trademarks; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name <oolayan.com>; and
(c) the disputed domain name <oolayan.com> has been registered and is being used in bad faith.
For 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 <oolayan.com> be transferred to the Complainant.
J. Nelson Landry
Dated: August 14, 2012