WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tamdeen Real Estate Company K.P.S.C. v. Perfect Privacy, LLC / Zeyad Bin Sanad
Case No. D2017-1940
1. The Parties
The Complainant is Tamdeen Real Estate Company K.P.S.C. of South Surra, Kuwait, represented by GM - Legal, Kuwait.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Zeyad Bin Sanad of Surra, Kuwait, self-represented.
2. The Domain Names and Registrar
The disputed domain names <altamdeen.com> and <tamdeenrealestate.com> are registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2017. On October 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 11, 2017 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 October 16, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2017. The Center received various email communications from the Parties during the period between October 11, 2017 and November 14, 2017. The Response was filed with the Center on November 8, 2017. The Complainant submitted a Supplemental Filing on November 13, 2017.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on November 24, 2017. 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.
On December 6, 2017, the Respondent sent a further email to the Center attaching a company logo in Dubai, with the name "TAMDEEN A member of TECOM INVESTMENTS".
4. Factual Background
The Complainant is a Kuwaiti company registered with the Ministry of Commerce under the name Tamdeen Real Estate Company in 1993. The Complainant is a part of the conglomerate of companies owned by or affiliated with Tamdeen Group.
The Respondent was the GM IT at Tamdeen Group and he was in charge of executing any payments with regards to the registrations and renewals of the domain names of Tamdeen Group. The domain names included <altamdeen.com> ("Disputed Domain Name (a)") and <tamdeenrealestate.com> ("Disputed Domain Name (b)"), both of which are now being disputed (together, the "Disputed Domain Names").
The Complainant holds several trademark registrations, including the Kuwaiti trademark TAMDEEN GROUP, registered on April 20, 2008 with registration number 93993 (the "Trademark").
The Complainant also filed a complaint with the Cybercrime Department of the Public Prosecution in Kuwait with regards to the Disputed Domain Names.
In an email dated October 24, 2017, the Respondent indicates that "As I mentioned in my earlier email. This issue has bern taking care by the Kuwaiti government legal authorities. Nevertheless, i am open for any kind of settlement options." The Respondent and the Claimant have not, as far as the panel is aware, settled the matter.
The Disputed Domain Names <altamdeen.com> and <tamdeenrealestate.com> were respectively registered on November 27, 2014, and June 27, 2000. The Disputed Domain Names each resolve to a website featuring sponsored links.
5. Parties' Contentions
The Complainant contends that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant describes Tamdeen Group as "a very well-known conglomerate of many companies acting in Kuwait and GCC local markets for decades. The Group is involved in many business sectors such as real estate development".
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
With regards to the Disputed Domain Name (a), the Complainant argues that it is confusingly similar and almost identical to <tamdeen.com>, the domain name of Tamdeen Group. The addition of "al" (the definite article in the Arabic language) to the Disputed Domain Name (a) could be perceived as "the Tamdeen".
With regards to the Disputed Domain Name (b), it is confusingly similar and almost identical to the Trademark and the trade name that the Complainant has been using since its establishment in 1981.
The Complainant alleges that the Respondent misused his powers and transferred the Disputed Domain Names to its name in 2013, and that the Respondent therefore has no legitimate grounds for holding the Disputed Domain Names.
Finally, the Complainant contents that the Disputed Domaine Names were registered and are being used in bad faith. In support of this contention, the Complainant states that the Respondent is cybersquatting and, having already sold another domain name to an affiliate of the Complainant, is seeking to sell the Disputed Domain Names as well, for USD 33,773 and USD 32,995.
In an email dated November 8, 2017, the Respondent communicated his Response to the Complaint, indicating that it has never been asked to transfer the Disputed Domain Names to the Complainant before the UDRP case was filed, and that it had received its end of service benefits indicating that the Complainant had considered that all assets and belongings of the Complainant had been handed to it by the Respondent. The Complainant had asked the Respondent to "stick to the unified domain name" <tamdeen.com> and that other domain names were no longer to be used.
The Respondent indicates that "as a precaution for future needs, I kept renewing the old unwanted domains names tell i have resigned and for about 5 years after my resignation."
The Respondent also indicates that a list of domain names that it was to transfer to the Complainant were included in an email sent to it by an employee of the Complainant by the name of Fadi Tinawi on December 17, 2012, and that the list did not include the Disputed Domain Names.
The Respondent argues that the word "Altamdeen", meaning "Urbanization" in Arabic, "is not exclusive to any firm or company and can be registered by any person."
The Respondent also indicates that the Complainant would not have waited five years to reclaim the Disputed Domain Names had the Complainant needed these.
6. Discussion and Findings
It is noted that the Complainant indicates that the matter is under investigation by the Cybercrime Department of the Public Prosecution in Kuwait and provides proof that a complaint has been lodged. The Complainant has requested that the panel rule on the matter without awaiting the outcome of these investigations. The matter of the status of the proceedings in Kuwait is under debate between the Respondent and the Complainant, and neither party has submitted any evidence in this regard.
The matter of the investigations must be addressed, as this point has been discussed at length by the parties. In the event that it is proven that a judgment was rendered against the Respondent that the latter is guilty of cybersquatting with regards to the Disputed Domain Names, then the panel would have given very serious consideration to such a ruling. As such, proof of any such conviction would have provided important guidance to the panel. However, the panel in this case does not need to give such a consideration as it has not been proven definitively that there has been a ruling by a competent authority in this regard in Kuwait. In all cases, the panel under the UDRP has authority to rule on the transfer.
The debate remains theoretical, as the outcome of the investigations in Kuwait have not been proven. The panel therefore has no choice but to disregard the issue of any criminal proceedings against the Respondent for failure of the parties to provide any evidence of the outcome.
It is also noted that the Respondent has requested communications to be in Arabic. Under the UDRP Rules (paragraph 11), the language of these proceedings is English as that is the language of the registration agreement, and therefore the panel is rendering its decision in English.
The Panel must render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Rules, paragraph 15(a)). The Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 above elements being established, the panel orders that the Disputed Domain Names be transferred to the Complainant on the basis of the analysis set out below.
A. Identical or Confusingly Similar
The Complainant trades under the name Tamdeen Real Estate Company. The word "tamdeen" is used in both Disputed Domain Names. The Disputed Domain Names are therefore clearly identical or confusingly similar to the Complainant's Trademark and trade name, regardless of the addition of the word "al" (or "the" in Arabic) in Disputed Domain Name (a).
B. Rights or Legitimate Interests
In AT&T Corp v. rnetworld, WIPO Case No. D2006-0569, it was held that:
"Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) – especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light."
The panel agrees with the above analysis that a complainant's burden of proof on this element is light. The Complainant argues that the Respondent has no rights or legitimate interests in the Disputed Domain Names. It is established that the Respondent was an employee of "Tamdeen Group", and had retained the Disputed Domain Names after its resignation from the company. In retaining the Disputed Domain Names, the Respondent appears to have misused its position in the company, without having any legitimate business purpose for retaining these Disputed Domain Names. It is noted that the Respondent has not disputed that it registered the Disputed Domain Names during its employment with the Complainant. In light of the foregoing, the argument is found to be sufficient to establish that there were no rights or legitimate interests in the Disputed Domain Names.
It is therefore up to the Respondent to demonstrate that it did have rights or legitimate interests in the Disputed Domain Names. It is noted, however, that the Respondent has not set out a positive case that it does have rights or legitimate interests in the Disputed Domain Names.
The Respondent does argue that the word "tamdeen" is a common word that cannot be owned by anyone. This analysis is not correct. The mere fact that the Disputed Domain Names contain a common word is not sufficient for there to be a legitimate interest in the same. See for example Octopustravel Group Limited v. Alexander Rosenblatt aka Yana Belkova, WIPO Case No. D2011-0417, where it was explained that:
"The mere registration of a generic word as a domain name will only be sufficient in and of itself to create a legitimate interest if the domain name is registered in good faith (cf. WIPO Overview 2.0: 'Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).'" This sentiment is also reflected in section 2.10 of the WIPO Overview 3.0.
The Respondent has not provided any evidence that the Disputed Domain Names are genuinely used or intended to be used in connection with their relied-upon meaning. In fact, neither one of the Disputed Domain Names takes the user to a webpage linked in any way with urbanization. In addition, the Respondent knew of the Complainant's business, its Trademark and registered trade name at the time of registration of the Disputed Domain Names. As such, the panel rejects the Respondent's defense with regards to "tamdeen" being a common name.
C. Registered and Used in Bad Faith
The Disputed Domain Names are being offered for sale at amounts largely exceeding any out-of-pocket expenses incurred for their registration.
In addition, the panel takes note of the Complainant's assertion that the Respondent had already sold a domain name (<alkout.com>) to a company affiliated with the Complainant, GLA Property Management Co., in which the latter had an interest.
It can therefore only be concluded that the Respondent had targeted the Complainant, and was operating with the intent that the Complainant purchase the Disputed Domain Names from the Respondent at these prices.
However, the strongest evidence of bad faith remains that the Respondent had kept the Disputed Domain Names knowing that these had been created for use by the Complainant, and had been used by the Complainant until the Complainant made the commercial decision to unify its domain names into one. As with Octopustravel Group Limited v. Alexander Rosenblatt aka Yana Belkova, ( WIPO Case No. D2011-0417), the panel finds that this knowledge is indicative of the bad faith of the Respondent. Indeed, the Panel finds the timing of the Respondent's unauthorized transfer of the Disputed Domain Names to its control at the end of his contractual relationship with the Complainant telling of the Respondent's bad faith.
In light of the above, the panel concludes that the Respondent had registered and used the Disputed Domain Names 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 names, <altamdeen.com> and <tamdeenrealestate.com>, be transferred to the Complainant.
Nasser A. Khasawneh
Date: December 15, 2017