WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Al Dobowi FZE v. Harjeev Singh Kandhari
Case No. D2014-1964
1. The Parties
Complainant is Al Dobowi FZE of Dubai, United Arab Emirates ("UAE"), represented by Dentons UKMEA LLP, United Kingdom of Great Britain and Northern Ireland ("UK").
Respondent is Harjeev Singh Kandhari of Dubai, UAE, represented by AC&H Legal Consultants, UAE.
2. The Domain Names and Registrar
The disputed domain names <aldobowi.com> and <aldobowigroup.com> (the "Domain Names") are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2014. On November 6, 2014, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On November 7, 2014, Network Solutions, LLC transmitted by email to the Center its verification response. 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 proceedings commenced on November 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2014. The Response was filed with the Center on December 3, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 12, 2014. 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.
Complainant submitted a supplemental filing on December 16, 2014.
The Rules provide only for the submission of a Complaint by Complainant and a Response by Respondent. However, the Panel will consider Complainant's Supplemental Filing in the interest of ensuring that each party has a fair opportunity to present its case. The Panel considers its decision to be in accordance with paragraphs 10 and 12 of the Rules, which in effect grant the Panel sole discretion to determine the admissibility of late or supplemental filings received from either party.
4. Factual Background
Complainant is part of the AI Dobowi group of companies, which has operated for over three decades marketing and distributing a range of automotive products under the name "AL Dobowi". Complainant has a registered trademark for AL DOBOWI in India and has trademark registrations for AL DOBOWI THE FUTURE IN MOTION in Oman, Bahrain, Kuwait, Qatar, UAE and Saudi Arabia.
According to the WhoIs records, the Domain Name <aldobowi.com> was registered on October 1, 1999, and the Domain Name <aldobowigroup.com> was registered on March 20, 2013.
Respondent was removed as a director and manager of Complainant on September 8, 2014.
5. Parties' Contentions
(i) Identical or confusingly similar
Complainant contends that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has submitted evidence that it is the owner of a registered trademark for AL DOBOWI in India and has trademark registrations for AL DOBOWI THE FUTURE OF MOTION in Oman, Bahrain, Kuwait, Qatar, UAE and Saudi Arabia. Complainant states that under UDRP precedent, the incorporation of Complainant's registered trademark in its entirety in the Domain Names is sufficient to establish that the Domain Names are identical or confusingly similar to Complainant's registered trademark. Therefore, Complainant argues that the Domain Names are identical or confusingly similar to the Complainant's registered marks.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Names. Complainant states that Respondent is a minority shareholder in Complainant and was previously a director and manager of Complainant. Complainant explains that there is a dispute between Respondent and the majority shareholders of Complainant in respect of three other companies, Al Dobowi Investments Limited, Kays Group Limited (the parent of Complainant) and Kandy & Kandy Limited of which Respondent is also a minority shareholder. Respondent has initiated proceedings in the British Virgin Islands. According to Complainant, these proceedings are not connected to this case.
Complainant states that the Domain Names <aldobowi.com> and <aldobowigroup.com> were registered by Respondent as a director and manager of Complainant in 1999. Respondent was listed as the registrant, account holder and primary contact until 2012, when the Domain Names were put into Complainant's name with Sanjeev Kamal (Complainant's IT administrator) as the Primary Contact. Complainant states that until 2012, Respondent held the two Domain Names on behalf of Complainant and they were linked to Complainant's website until October 15, 2014. At that time, Complainant discovered that the Domain Names were redirected to a website for Zenises, a company established by Respondent that is not connected to Complainant. Respondent was removed as a director and manager of Complainant on September 8, 2014. Therefore, Complainant argues he was not authorized to act on behalf of Complainant and the transfer of the Domain Names into his own name was unauthorized and intended to disrupt Complainant's business. The only way Complainant has rights is through his indirect interest as minority shareholder in Complainant or the holding companies that own Complainant. Complainant asserts that the record confirms Respondent has no rights in his personal capacity directly in the Domain Names.
Complainant contends that the re-direction of the Domain Names was a premeditated attempt to disrupt Complainant's business and divert customers to a company, Zenises, which is a competitor of Complainant. This allegedly deceptive re-direction will mislead customers into believing that Complainant's business and Zenises are connected. Complainant contacted the registrar and discovered that Respondent had unlawfully accessed Complainant's account for the Domain Names on October 15, 2014 and transferred the account into his own name (with himself as the primary contact). This was done without the authorization of Complainant. Through correspondence with the registrar, the Domain Names were partially transferred back into the name of Complainant (with Complainant now being the "Registrant Organization"); however, Respondent retains de facto control of the Domain Names as Respondent is listed as the primary contact and account holder. The registrar has now "locked" the Domain Names pending this UDRP case.
(iii) Registered and used in bad faith
Complainant explains that the Domain Names were originally registered in good faith and for the purpose of promoting Complainant's business. However, Respondent unlawfully accessed the account for the Domain Names on October 15, 2014 and transferred the account into Respondent's name in bad faith. Respondent was not authorized or permitted to do this by Complainant, as he is a minority shareholder. Complainant argues that this was a "hijack" of Complainant's main customer-facing website, and was a premeditated attempt to disrupt Complainant's business and cause mischief. Following this action, Respondent re-directed the Domain Names to his Zenises company website at "www.zenises.com". Complainant contends that this re-direction was done in bad faith to divert consumers from the Al Dobowi group business to Respondent's competing business, to mislead consumers into believing that Zenises was connected to Complainant.
Complainant alleges that when Respondent took control of the Domain Names on October 15, 2014, Respondent also accessed Complainant's private business email accounts ("@aldobowi.com") and used this email access to falsely assume the identity of Jasjeev Kandhari, a director of Complainant, to give authorizations in relation to bank transfers, to communicate with customers, and to otherwise access Complainant's confidential information. Complainant has had no access to the "@aldobowi.com" emails from October 15, 2014 when Respondent allegedly hijacked the accounts. Complainant discovered, through being forwarded emails by third parties, that Respondent had been sending emails in the name of Jasjeev Kandhari after October 15, 2014 without Jasjeev's authorization. This allegedly included Respondent emailing Complainant's bank, HSBC, on October 20, 2014 from the email address "firstname.lastname@example.org" rejecting a transfer of funds previously requested by Jasjeev Kandhari as part of the normal business of the AI Dobowi group. This caused significant disruption to Complainant and was discovered by an account manager of Complainant, who then emailed HSBC to discover why the transfer had not been made. HSBC advised in an email dated October 21, 2014 that "Jasjeev" had instructed the bank to reject the transaction and then forwarded the email correspondence from "email@example.com" to the real Jasjeev Kandhari, who now uses a new email address at "firstname.lastname@example.org". A further example of Respondent allegedly hijacking Jasjeev Kandhari's email account was when customer information was forwarded from "email@example.com" on October 21, 2014 (when Respondent had unauthorized control of the email address) to an email address of Respondent and then on to third parties. Complainant contends this is further evidence of Respondent hijacking the Domain Names, acting in bad faith and disrupting Complainant's business through unlawful and deceptive activities.
Complainant claims that it is unable to take control of the Domain Names and associated email addresses without changing the primary contact for the account associated with the Domain Names. Complainant has therefore been unable to use its global company website or its business email accounts since October 15, 2014 as a result of Respondent's actions. Complainant urges that this is causing significant financial loss and serious damage to its reputation.
(i) Identical or confusingly similar
Respondent submits that the Domain Names are under his control, explaining that he registered them in 1999. Respondent highlights that this was admitted by Complainant in the Complaint. Respondent states that Complainant is a company in which Respondent is indirectly a minority shareholder and the other indirect shareholders are Respondent's father, mother and brother.
Respondent claims that he registered the Domain Names in his individual and personal capacity and not as an agent of Complainant. Respondent further states that he allowed Complainant, on a royalty free license basis, to use the Domain Names.
Respondent observes that the trademark registered in India was registered by Complainant in January 2008, long after registration of the Domain Names by Respondent. Respondent challenges Complainant's rights to the trademark and states that he intends on initiating proceedings in the Indian courts in respect of the ownership of this mark.
(ii) Rights or legitimate interests
Respondent explains that there is an ongoing family dispute between himself and the other members of his family. The dispute involves the separation of control over various businesses and assets of the Kandhari family, including trademarks that are owned by one or more family members or by companies that are part of the Kandhari family business. Because the dispute could not be settled amicably, Respondent has commenced proceedings in the British Virgin Islands seeking a court appointed liquidator for Kays Group Limited (which is a holding company for Complainant), Al Dobowi Investments Limited, and Kandy & Kandy Limited. These three companies are the primary holding companies for the Kandhari family, as they own various operating companies of the family business in the United Arab Emirates, the UK, Europe and Africa. In light of these circumstances and the ongoing family dispute, Respondent rejects Complainant's position that the proceedings in the British Virgin Islands are not connected to this case. According to Respondent, the subject matter of the Complaint is one of the integral aspects of the proceedings in the British Virgin Islands. Respondent asserts that there is also a possibility that upon completion of the proceedings in the British Virgin Islands, Respondent's share of the family business and assets could include the AL DOBOWI trademark.
Respondent states that the Domain Names were registered and paid for by him in his individual capacity in 1999 and not on behalf of Complainant. Respondent claims he permitted Complainant and other companies in which Respondent is a direct or indirect shareholder to use the Domain Names on a royalty free license basis. At no time did Respondent grant ownership rights over the Domain Names to Complainant or to any members of his family. Respondent contends that transfer of the Domain Names from Respondent's name to Complainant's name was an illegal transfer done by Sahjeev Kamal (Complainant's IT administrator) on the instructions of Surender Sirigh Kandhari (Respondent's father) and/or Jasjeev Singh Kandhari (Respondent's brother). This transfer was allegedly taken against Respondent as a result of the ongoing family dispute in order to deny Respondent his ownership rights the Domain Names. Respondent states that he had a number of times orally objected to the transfer of Domain Names in 2012.
Because Respondent is the owner of the Domain Names, Respondent explains he attempted the re-direction of the Domain Names to a website linked to the domain name <zenises.com> in order to confirm if web forwarding was working on these accounts. Additionally, the website hosted at <zenises.com> is not fully functioning and is only a holding page.
Respondent contends the transfer of the Domain Name accounts in 2012 into the name of Complainant was illegal, and Respondent was well within his rights to have the Domain Names re-transferred into to his own name. Additionally, Respondent contends that Sanjeev Kamal has been involved in illegal transferring and hijacking of other domain names that were registered and owned by Respondent until recently, including: (i) <apexrecruitments.com>; (ii) <eternityt.com>; (iii) <infiriitytire.com>; (iv) <infinity-tires.com>; (v) <infinity-tyres.com>; (vi) <kandharis.com>; and (vii) <lltyres.com>. This was confirmed to Respondent by an email sent by Hostway to Respondent on November 14, 2014. This is allegedly another step in the ongoing family dispute between Respondent and other members of his family. Respondent is considering his options in relation to filing legal/administrative proceedings against Sanjeev Kamal and Complainant in relation to the allegedly illegal transfer of domain names by Sanjeev Kamal on behalf of Complainant.
(iii) Registered and used in bad faith
Respondent states that he had formerly managed Complainant's business and had permitted Complainant to use the Domain Names registered by Respondent in his personal capacity, with the intention of further contributing to Complainant's business.
Complainant contends that, as the registration of the Domain Names preceded registration of the AL DOBOWI trademarks by almost 9 years, it cannot be claimed that the Domain Names were registered by Respondent in order to prevent Complainant from reflecting the marks in a corresponding domain name. Further, Respondent has not engaged in a pattern of such conduct. Respondent argues that this is also evidenced by the fact that Complainant had registered the domain name, <aldobowi.ae>, in the United Arab Emirates and is currently using it to host Complainant's global website. Complainant has changed the email addresses for all its employees to addresses using "aldobowi.ae". Therefore, Respondent is at loss to understand the "substantial financial losses" and "reputational damage" claimed by Complainant. In response to Complainant's challenge of Respondent's ownership rights to the Domain Names, Respondent asserts that he is considering legal proceedings to challenge the rights of Complainant in the <aldobowi.ae> domain name, which is deceptively similar to the Domain Name <aldobowi.com> that was registered and owned by Respondent.
Additionally, Respondent states that he did not access Jasjeev Kandhari's email account and send an email to HSBC rejecting a request for funds transfer. At that time, Respondent was still an authorized representative of Complainant and enjoyed bank mandates with HSBC and the other banks in which Complainant had accounts. Therefore, if Respondent's intention was to reject a request for transfer funds made by Jasjeev Kandhari and cause disruption to Complainant, Respondent could have done so using his own email account. Respondent argues the allegations in the Complaint are an attempt by Complainant to cause reputational damage to Respondent in the eyes of Panel. Further, the allegations in the Complaint are attempts to damage the reputation of Respondent with the intention of negatively impacting Respondent's position in the family dispute and the legal proceedings that have been commenced in the British Virgin Islands. Respondent is considering filing legal proceedings against Complainant and its officers in this regard.
C. Complainant's Supplemental Filing
Complainant states the parties agree that Respondent is an indirect minority shareholder in Complainant and that the other indirect shareholders are Respondent's father, mother and brother. Respondent was also previously a manager of Complainant's business. Complainant argues, however, that as a shareholder (whether direct or indirect) or manager of the business, Respondent does not have any rights to hold, own, control or unilaterally deal with Complainant's assets in his own name, including the Domain Names. Further, Respondent is no longer authorized to act on behalf of Complainant. Respondent was removed as a director and manager of Complainant on September 8, 2014, which was over a month before Respondent took control of the Domain Names and re-directed them to the website "www.zenises.com".
Although Complainant agrees that Respondent originally registered the Domain Names in his own name, Complainant contends that this was in his capacity as agent for Complainant. Respondent admits he was previously managing Complainant's business and that he is a shareholder in the holding companies of the AI Dobowi group, of which Complainant is a subsidiary. This is why the account that held the Domain Names was transferred into Complainant's name on or prior to October 3, 2012. Respondent claims that he objected orally to this transfer at the time. However, this is denied by Complainant and Respondent has not provided any evidence of an objection. Counter to Respondent's allegation, Complainant has submitted an email showing that Respondent requested that Sanjeev Kamal be added as an administrative contact for the account on October 3, 2012, at which time the account holder was listed as AI Dobowi Ltd. Copies of emails also confirm that if Respondent had wanted to change the name of the account from AI Dobowi Ltd to Respondent in 2012, he would have been able to do so as he was listed as the primary contact. It is only in recent months that Respondent has made the suggestion that the Domain Names, registered in the name of Complainant, belonged to him personally. Accordingly, Complainant rejects the claim that Respondent allowed Complainant to use the Domain Names on a royalty free license basis. This was not the case, as the Domain Names have always been intended to belong to Complainant for use by Complainant and the Al Dobowi group companies, and have been used in this manner since registration.
Complainant argues that Respondent appears to claim that the Domain Names registered by Respondent in 1999 on behalf of Complainant were the first use of the AL DOBOWI brand. This is not the case. The AI Dobowi group was founded with the establishment of AI Dobowi Tyre Co. LLC in 1978, when Respondent was three years old. The group has for many years operated as an international business marketing and distributing a range of automotive products under the name "Al Dobowi". As evidence of the AL DOBOWI brand pre-dating registration of the Domain Names, Complainant has submitted the following evidence: (i) the trade license with chamber of commerce membership certificate of AI Dobowi Tyre Co. LLC, Dubai, formed by Surender Singh Kandhari on February 9, 1978; (ii) the formation documents for Al Dobowi Ltd., Isle of Man, formed on June 19, 1989; (iii) the trade license for Complainant, evidencing that it was formed on February 1, 1995; and (iv) several news articles showing that AL DOBOWI was a well-known brand with reputation and goodwill pre-dating registration of the Domain Names. This prior use by Complainant and the AI Dobowi group provides Complainant with unregistered and common law rights in the AL DOBOWI name and mark. A witness statement from Surender Singh Kandhari confirms the history of the Al Dobowi group and the reputation and goodwill in the AL DOBOWI name and brand.
Further with respect to Respondent's argument that registration of the Domain Names preceded registration of the AL DOBOWI trademarks, the original registration of the Domain Names was not made in bad faith as Respondent registered the Domain Names in his capacity as manager and agent for the Complainant. The unlawful transfer of the Domain Names in October 2014 and the subsequent use of the Domain Names and associated email addresses have been in bad faith.
Complainant contends that Respondent has provided no evidence to refute that the Domain Names are identical or confusingly similar to the trademark in which Complainant has rights, as required by the Policy. Respondent has made no challenge to ownership of any trademark registration in Complainant's name, including the Indian registration, and has provided no evidence of the grounds on which he would do so. Complainant acknowledges that Respondent has issued court proceedings in the British Virgin Islands to appoint a liquidator over Al Dobowi Investments Limited, Kandy & Kandy Limited and Kays Group Limited, which are holding companies of Complainant's group of companies, to distribute the assets of these companies. Respondent, however, has not attempted to appoint a liquidator over Complainant, nor has he challenged ownership of the trademark registrations or goodwill owned by Complainant or any other companies in the group. Complainant contends that whether or not Respondent is a direct or indirect shareholder of Complainant, and even if he was the sole shareholder of Complainant (which he is not, and nor is he trying to be), the Domain Names remain company property of Complainant and not Respondent's own personal property. The Domain Names and trademarks are not referenced in the British Virgin Islands proceedings and it is therefore incorrect of Respondent to claim that the subject matter of this Complaint, i.e., the Domain Names, are one of the integral aspects of those proceedings. As such, the British Virgin Islands proceedings are not connected with this Complaint. Complainant argues that this is a deliberate attempt by Respondent to confuse matters so he can retain unlawful control of the Domain Names.
While Respondent claims that re-direction of the Domain Names to the website at "www.zenises.com" was to confirm that web forwarding was working for these accounts, Complainant urges that this is not correct. The re-direction of the Domain Names was not a test. The re-direction occurred from the time Respondent unlawfully transferred the Domain Names until the date that Complainant's request to Network Solutions to have the re-direction stopped was achieved. Although the website hosted by the domain name <zenises.com> is not fully functioning, Respondent intended website users to view the site as being connected to the website at "www.aldobowi.com" because of the redirection and the "fresh start, same old values" tagline on the site. According to Complainant, this is done to create confusion, pass off and entice customers of Complainant to a separate unconnected business.
Complainant asserts that Respondent has not filed any UDRP or other proceedings in relation to the domain names referenced in his Response (i.e., <apexrecruitments.com>; <eternityt.com>; <infiriitytire.com>; <infinity-tires.com>; <infinity-tyres.com>; <kandharis.com>; and <lltyres.com>). These domain names are not the subject of this Complaint and therefore Complainant does not address Respondent's allegations in detail. However, to the extent that these domain names were registered in the name of Respondent, this was always in Respondent's capacity as manager and/or agent of companies within the AI Dobowi group, as is also the case for the Domain Names.
Complainant states that Respondent appears to suggest no harm has been caused to Complainant as a result of the loss of the Domain Names. However, this is incorrect. Complainant explains that the reason the <aldobowi.ae> domain name is now being used by Complainant is because Respondent has unlawfully acquired Complainant's main Domain Name, <aldobowi.com>. Complainant had to change the email addresses for all its employees because Respondent took control of the email addresses linked to "@aldobowi.com". Having to change over 260 email addresses has been a costly and time-consuming exercise, caused by Respondent's actions.
Complainant argues that prior to the unlawful acquisition of the Domain Names, the "@aldobowi.com" email addresses were hosted by Hostway.com. Following Respondent's allegedly unlawful acquisition of the Domain Names, the email addresses were re-routed to a Network Solutions mail server. The following email addresses appear to have been recreated on the Network Solutions mail server: "firstname.lastname@example.org", "email@example.com", "firstname.lastname@example.org" and"email@example.com". It also appears that the email address "firstname.lastname@example.org" was forwarded to"email@example.com". Harshit Shah is a general manager at Complainant and a key contact person dealing with factories on a daily basis related to sensitive information such as pricing, moulds, etc. Complainant has submitted copies of emails sent to and failure notices from "@aldobowi.com" email addresses following Respondent's allegedly unlawful acquisition of the Domain Names. No non-delivery failure notices were received in relation to the following email addresses: "firstname.lastname@example.org"; "email@example.com"; and "firstname.lastname@example.org" until the Domain Names were locked by Network Solutions. Complainant claims that this was because Respondent wanted to have unlawful access to the email addresses of his brother, Jasjeev Kandhari ("email@example.com") and his father, Surender Singh Kandhari ("firstname.lastname@example.org" and "email@example.com") for the allegedly unlawful and bad faith reasons discussed in the Complaint. The forwarding of the "firstname.lastname@example.org" email address to "email@example.com" is illustrated by the non-delivery failure notice received from "firstname.lastname@example.org" when a test email was sent to "email@example.com". Complainant assumes that the forwarding of this email address to Respondent's own email address was so that Respondent was able to access sensitive information about Complainant's business.
Complainant contends that, contrary to Respondent's claims, dealing with the allegedly unlawful acquisition of the Domain Names by Respondent and lack of access to the "@aldobowi.com" email addresses has caused Complainant to incur significant costs. The re-direction of the Domain Names to a separate business has caused harm to Complainant's reputation and goodwill. Although the re-direction has ceased (as a result of Network Solution's freeze on the Domain Names' account), the Domain Names are still not connected to Complainant's global website, which means that the harm is continuing as customers who may want to access Complainant's website will not see it and may not realize that the website is currently hosted by the domain name <aldobowi.ae>.
While Respondent denies sending fraudulent emails in his Response, Complainant asserts that his denial is false. Respondent was not an authorized representative of Complainant at the time of the email sent to HSBC, as is shown by evidence submitted with the Complaint. At the time this email was sent, Jasjeev Kandhari had no access to the email address "firstname.lastname@example.org", as it was after Respondent had taken control of the Domain Names and associated email accounts. Therefore, it can only have been Respondent or someone with his login details who sent these emails. Complainant assumes this was a deliberate attempt to disrupt Complainant's business (Respondent having been removed from his position as director and manager). Further examples of such conduct include Respondent separately pretending to be his father, Surender Singh Kandhari, in email exchanges with a supplier of the AI Dobowi group.
Respondent's re-direction of the Domain Names to "www.zenises.com" is evidence of Respondent's attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his site or of a product or service on his website and as such is an example of Respondent's bad faith under the UDRP policy. Respondent's actions with respect to the email addresses associated with the <aldobowi.com> Domain Name are further evidence of Respondent's use of the Domain Names in bad faith.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has registered trademark rights in the AL DOBOWI mark dating from 2008, with common law rights due to its use in commerce for over 30 years dating from the late 1970s. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7 ("The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. The fact that the secondary meaning may exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction."). Complainant has thus established not only registered rights, but also common law rights in its AL DOBOWI mark through use and promotion in commerce.
Respondent has stated that he may challenge Complainant's trademark registrations in various jurisdictions; however, based on the evidence of record no challenges were initiated as of the commencement of this case. The Panel finds that Complainant has therefore established registered and common law trademark rights in the AL DOBOWI mark.
The Panel also finds that the Domain Names <aldobowi.com> and <aldobowigroup.com> are identical or confusingly similar to Complainant's AL DOBOWI mark. The Domain Name <aldobowi.com> is visually virtually identical to the AL DOBOWI mark, the only difference being that the space is omitted between the terms "al" and "dobowi" in the Domain Name, which is a common approach in many domain names. As for the Domain Name <aldobowigroup.com>, the addition of the word "group" is insufficient to distinguish this Domain Name from Complainant's AL DOBOWI mark. See WIPO Overview 2.0, paragraph 1.2 ("The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion").
Accordingly, the Panel concludes that the Domain Names are identical or confusingly similar to Complainant's AL DOBOWI mark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Panel finds that Complainant has presented a prima facie showing that Respondent has no right or legitimate interests in the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy. Complainant has demonstrated that rights had developed in the AL DOBOWI name and mark which pre-date Respondent's registration of the Domain Names, with the Al Dobowi name having been used by the Kandhari family business since the time when Respondent was a child. Respondent was aware of the Al Dobowi name and its use in connection with the Al Dobowi group when he registered the Domain Names. Further, both Complainant and Respondent acknowledge that Respondent was a director and manager of Complainant. Respondent's brother, Jasjeev Singh Kandhari, submitted a witness statement stating that he requested Respondent to register the Domain Names on behalf of Complainant and the Al Dobowi group in 1999. The Domain Name <aldobowi.com> has been used since the time of registration for the primary customer-facing website of Complainant and the Al Dobowi group. It has also been used as the host for email addresses for all of Complainant's employees. Complainant also submitted evidence that Respondent requested that Sanjeev Kamal (IT manager for Complainant) be added as an administrative contact for the account in October 2012, at which time the account holder was AI Dobowi Ltd. These circumstances all point toward Respondent having registered the Domain Names on behalf of Complainant, acting as Complainant's representative when doing so. Complainant has also submitted a witness statement of Sanjeev Kamal to indicate that Respondent never claimed to have registered the Domain Names for his own personal ownership until recently when a dispute arose among the family members.
In response to Complainant's prima facie case, Respondent has asserted that he owns the Domain Names, having registered them in his personal capacity and not as an agent of Complainant. He states that he has allowed Complainant to use them on a "royalty free license basis." However, this would be an unusual arrangement given that Respondent was a director and manager of Complainant and the Al Dobowi name was used by the existing family owned businesses at the time when the Domain Names were registered. In the absence of documentary evidence showing a "royalty free license" arrangement, the Panel finds, on the balance of the probabilities, that Respondent did not register the Domain Names for his own personal ownership. Thus, he does not have any right or legitimate interests in the Domain Names in his own personal capacity. Any rights that Respondent might have must be established through his ownership interests in the Kandhari family companies. The Panel understands, as reported by both Complainant and Respondent, that Respondent has commenced proceedings in the British Virgin Islands regarding the three primary holding companies of the Kandhari family, including Al Dobowi Investments Limited, Kandy & Kandy Limited, and Kays Group Limited, which is the holding company for Complainant. The Panel makes no findings with respect to the ownership interests of Kandhari family members in these companies.
Accordingly, Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. The Panel determines that the Domain Names have been registered and used in bad faith.
Both parties agree that when the Domain Names were initially registered, there was no bad faith on the part of Respondent. However, a number of years after the initial registrations, on or about October 15, 2014, Respondent accessed the accounts associated with the Domain Names and changed key registration details, making himself the primary administrative and technical contact while leaving Al Dobowi Ltd. as the registrant organization. These changes to the Domain Names' accounts effectively transferred control over the Domain Names to Respondent. The actions taken by Respondent subsequent to these changes demonstrate that he did have, and in fact exercised, control over the Domain Names.
While a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith, a change in possession or control over a domain name may be regarded as a new registration for purposes of the UDRP, whereby the relevant intent of the acquiring party is to be assessed as at the date when that possession or control was acquired. See WIPO Overview 2.0, paragraph 3.7. The Panel therefore considers that Respondent's bad faith registration and use should be assessed from October 2014, and not before that time.
The record indicates that Respondent was removed as a director and manager of Complainant on September 8, 2014. Therefore, it appears that Respondent was not authorized to transfer key registration details for the Domain Names into his own name when he did so in October 2014. Moreover, as the Panel determined above, Respondent had no personal direct ownership interest in the Domain Names that would have justified these changes. Further, at that time, the Domain Names, which had been linked to the website for Complainant and Al Dobowi group companies, were redirected to a website for Zenises, a company established by Respondent that is not connected to Complainant. Also at that time, access was cut-off for all of the email addresses of Complainant's more than 250 employees, who had previously been using the <aldobowi.com> Domain Name for their email addresses. Complainant and Respondent have also disputed additional measures allegedly taken by Respondent to disrupt Complainant's business, such as improperly accessing email accounts and sending emails while using the former emails addresses of Respondent's family members, but the Panel does not need to determine the veracity of these allegations in order to decide this case.
The Panel finds that Respondent targeted Complainant when it transferred the key account details for the Domain Names into his own name, and then used his control over the Domain Names in bad faith to disrupt the business operations of Complainant and the Al Dobowi group companies. In particular, it is undisputed that Respondent re-directed the Domain Names away from Complainant's website to the website for Zenises, a company set-up by Respondent, and also blocked the email addresses of Complainant's employees that previously had been linked to the <aldobowi.com> Domain Name.
Accordingly, the Panel finds that Complainant has satisfied the third element 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 Domain Names, names <aldobowi.com> and <aldobowigroup.com> be transferred to Complainant.
Christopher S. Gibson
Date: December 30, 2014