WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Leminar Air Conditioning Co. LLC v. Husain Bhabhrawala

Case No. DAE2017-0001

1. The Parties

The Complainant is Leminar Air Conditioning Co. LLC of United Arab Emirates (“UAE”), represented by Madhukar Nath Chaturvedi, UAE.

The Respondent is Husain Bhabhrawala of Dahod, India.

2. The Domain Names and Registrar

The disputed domain names <flamesafe.ae> and <gallowayacoustics.ae> are registered with AE Domain Administration (“.aeDA”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2017. On the same date, the Center transmitted by email to.aeDA a request for registrar verification in connection with the disputed domain names. On May 2, 2017, .aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amended Complaint with the Center on May 9, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (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 May 10, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2017. The Response was filed with the Center on May 28, 2017.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on June 19, 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.

4. Factual Background

The Complainant is a limited liability company registered in Dubai, UAE. The Complainant manufactures and sells industrial acoustics products. The Complainant sought the registration of the trademark Flame Safe with the UAE Ministry of Economy, Trade Marks Department, on July 10, 2016, and the same was subsequently registered on February 8, 2017, under registration number 256323.

The Respondent registered two domain names, <gallowayacoustics.ae> and <flamesafe.ae>, with Instra Corporation on December 29, 2016.

As evidenced in the Respondent’s submissions, the Complainant contacted the Respondent on January 17, 2017, in relation to the sale of the registered domain names <gallowayacoustics.ae> and <flamesafe.ae>. The disputed domain names resolve to Instra’s parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it had sought the registration of the domain names <gallowayacoustics.ae> and <flamesafe.ae> from the accredited registrar ETISALAT on December 29, 2016, at 12:30 PM. When the Complainant further followed up with ETISALAT, the Complainant was informed that the two domain names were already registered with another domain registration service provider, Instra Corporation PTY Ltd.

The Complainant advances that the domain names <gallowayacoustics.ae> and <flamesafe.ae> are identical and confusingly similar to trademarks or service marks in which it has rights.

The Complainant also advances that the Respondent has no rights or legitimate interests in respect of the domain names, as it is not affiliated with the name “Galloway Acoustics” or “Flame Safe”. The Complainant alleges that the Respondent registered the domain names <gallowayacoustics.ae> and <flamesafe.ae> with the intention to mislead the clients and customers of the Complainants and to tarnish and cause financial loss to the business of the Complainant.

Finally, the Complainant advances that the domain names <gallowayacoustics.ae> and <flamesafe.ae> have been registered or are being used in bad faith. The Complainant alleges that the Respondent’s submission of the domain name registrations on the same day that the Complainant submitted its application to register the domain names suggests bad faith. The Complainant further alleges that the registrations were to prevent the Complainant from reflecting its trademarks in corresponding domain names, that the intent was to disrupt the business of the Complainant, and that there is a likelihood of confusion for the clients and customers of the products manufactured by the Complainant.

B. Respondent

The Respondent is a self-described professional freelancer who engages, amongst others, in “Domain Flipping”.

The Respondent advances that the domain name <flamesafe.ae> is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights, as the trademark Flame Safe was only registered on February 8, 2017, two months after the Respondent registered the domain name <flamesafe.ae>.

The Respondent advances that the Complainant has not submitted any proof of its registration of the trademark GALLOWAY ACOUSTICS and thus has no rights in the domain name <gallowayacoustics.ae>.

The Respondent also advances that it has rights or legitimate interests in respect of the domain names <gallowayacoustics.ae> and <flamesafe.ae>, as it registers and sells domains names, which is a legitimate noncommercial or fair use of the domain names.

The Respondent argues that it has not registered the domain names <gallowayacoustics.ae> and <flamesafe.ae> in bad faith and is not using these in bad faith. The Complainant has not provided proof of the date of the Respondent’s attempt to register the domain names. In addition, it is legal to sell domain names that do not infringe on the trademark rights of third parties, and the Complainant’s trademarks were registered after the Respondent registered the domain names; hence, the domain names <gallowayacoustics.ae> and <flamesafe.ae> were not registered in order to prevent the Complainant from reflecting its marks in corresponding domain names. The Respondent is not competing with the Complainant’s business, nor has it registered the domain names to disrupt the Complainant’s business. Finally, the Complainant had approached the Respondent to buy the domain names.

6. Discussion and Findings

Under paragraph 6(a) of the Policy, the Complainant must establish three elements to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent’s domain name has been registered or is being used in bad faith.

All three of these elements must be proven by the Complainant in order to obtain relief. The Complainant has not demonstrated any rights in the GALLOWAY ACOUSTICS mark, whether by way of trademark registration or use. As such, the Complainant has failed in proving paragraph 6(a)(i) of the Policy with regards to GALLOWAY ACOUSTICS and therefore the Complaint against the domain name <gallowayacoustics.ae> must be rejected, without the need to review the two other elements of paragraph 6(a) of the Policy, as explained further below.

With regards to the registration of the domain name <flamesafe.ae>, the Panel finds that it should be transferred to the Complainant as it fulfills the three elements of paragraph 6(a) of the Policy, as explained further below.

A. Identical or Confusingly Similar

1. Galloway Acoustics

The Complainant alleges that it had entered into a License & Manufacturing Agreement dated February 5, 2003 with Galloway Group Limited. A copy of the License & Manufacturing Agreement was not provided. The Complainant alleges that it is the sole manufacturer and seller of the industrial acoustics products under the brand and style of GALLOWAY ACOUSTICS since February 5, 2003, but has provided no evidence of these activities.

A cursory research online reveals that a company by the name of Leminar Air Conditioning Industries L.L.C. offers products under the brand name GALLOWAY ACOUSTICS. The Complainant’s website does not, however, feature these products. The Complainant and Leminar Air Conditioning Industries L.L.C. appear to be different entities, and there are no grounds in the provided record that would enable the Panel to conclude that the Complainant is involved in the manufacturing or offering of GALLOWAY ACOUSTICS products.

The Panel would have been minded to find rights in a trademark or trade name where it is satisfied that the Complainant demonstrates genuine use in the market of such a trademark or trade name, or that it was duly authorized by way of a license agreement to act in relation to such a trademark or trade name. In order to come to such a finding, the Panel would expect to be able to review the elements that indicate the use, or a duly executed license agreement that contains a stipulation that the Complainant may act to protect the trademark or trade name. Given the lack of any documentary evidence of the assertions made by the Complainant relating to the license granted by Galloway Group Limited, the Panel cannot come to a finding that the Complainant was authorized to act on behalf of Galloway Group Limited to protect the GALLOWAY ACOUSTICS trade name or trademark. Similarly, given the lack of documentary evidence that the Complainant was manufacturing and selling products under the brand GALLOWAY ACOUSTICS, the Panel cannot come to the conclusion that the Complainant had interests or rights in the mark.

Equally, the Complainant has not advanced by proof that the trademark Galloway Acoustics was registered. It is noted that a confirmation of a request to register a trademark was filed with the UAE Ministry of Economy, but the same confirmation does not bear the indication of the trademark for which registration is being sought. The confirmation bears a handwritten note “Registration of New TM (GALLOWAY ACOUSTICS) of LAT”. There is no way for the Panel to confirm the identity of the person who had made the handwritten note on the confirmation. As such, the Panel is not satisfied that the Complainant has in any way evidenced that it has rights in the trademark GALLOWAY ACOUSTICS.

As such, the Panel finds that the Complainant has failed to demonstrate that it has any rights in the mark GALLOWAY ACOUSTICS that would allow it to act against the registrant of a domain name bearing such mark. Thus, the Complaint with regards to GALLOWAY ACOUSTICS must be rejected for failing to meet the requirement under paragraph 6(a)(i) of the Policy, without the need to examine whether the other two elements of paragraph 6(a) of the Policy have been fulfilled.

2. Flame Safe

The Complainant alleges that it has developed a HVAC sheet metal GI Ducts with CGF 1 type Flange System, fire rated ducts, spiral round duct, sound attenuators, acoustic louvres, volume control dampers, VAV Boxes, fire dampers and other accessories, under the name and style of “Flame safe”. The Complainant further alleges that it has been in the business of manufacturing, marketing and selling of “Flame Safe” products since at least 2016. It is noted that the Complainant states at paragraph 3 of its Complaint and amended Complaint that the products have been manufactured, marketed and sold since 2013, and at paragraph 5 of its Complaint and amended Complaint that the products have been manufactured, marketed and sold since 2016. The Complainant alleges that it has developed considerable goodwill, customer database and market reputation in the UAE. The Complainant has not provided any evidence of these assertions.

However, the Complainant has advanced proof that it has sought the registration of the trademark FLAME SAFE with the UAE Ministry of Economy, Trade Marks Department, on July 10, 2016, and that the same was subsequently registered on February 8, 2017, under registration number 256323.

The Complainant is the owner of the trademark Flame Safe, which it had submitted for registration on July 10, 2016, and which was subsequently registered on February 8, 2017. The request for registration of the trademark Flame Safe by the Complainant predated the Respondent’s registration of the domain name <flamesafe.ae>. The Respondent’s argument that the Complainant has no rights in the trademark Flame Safe therefore simply cannot be entertained.

In addition, the trademark is identical to the registered domain name, both using the words “flame” and “safe”, in that order.

As such, the Complainant has proven the first element of paragraph 6(a) of the Policy.

B. Rights or Legitimate Interests

The Respondent advances that it is a professional freelancer with a variety of freelance services, of which one is “domain flipping”. The Respondent evidences that it has registered two domain names, <gallowayacoustics.ae> and <flamesafe.ae> with Instra Corporation by providing an invoice dated December 30, 2016.

By the Respondent’s own admission, it is not affiliated with the brand Flame Safe, but has acquired the domain name <flamesafe.ae> for resale. Domain flipping is one of the Respondent’s “freelance business[es]”, and the resale price of the registered domain name would have to be at least in excess of the documented out-of-pocket expenses incurred for the registration of the domain name in order for the “domain flipping” to be considered a business.

It is also noted that this particular issue of a respondent buying domain names for the sole purpose of reselling these has already been addressed. See, for example, NIKE, Inc. v. Jaeik Jung, WIPO Case No. D2000-1471,¹ where it was held that:

“In this element the Respondent must establish rights or a legitimate interest in the domain name in issue. […] It does not appear that Respondent has ever been commonly known by any designation similar to the domain names in issue. The Respondent does not plead that he used any trade mark or service mark that is related to the domain names. The Respondent has not made use of the domain names in connection with any business. The Respondent is not making non-commercial use of the domain names.

The Respondent claims that he intended to resell the domain names to ‘international business persons’ who would be free from trade mark infringement of the Complainant’s brand. But even in the extremely unlikely event that such ‘international business persons’ could be found to exist, this would mean only that these people might be able to establish rights or a legitimate interest in the domain names. It does not demonstrate rights or a legitimate interest for the Respondent.”

The panel in that case held that the respondent’s resale of domain names did not demonstrate rights or a legitimate interest. The Panel agrees with this conclusion. A right or legitimate interest cannot exist where the website is not being exploited in any manner, there is no affiliation with the words as registered in the domain name (here, no affiliation with any activities under the names “flame”, “safe”, or “flame safe”), and where the sole purpose of the registration of a domain name is the resale of the same.

It is therefore clear to the Panel that the Respondent does not have rights or legitimate interests in the registered domain name.

C. Registered and is Being Used in Bad Faith

Paragraph 6(b) of the Policy provides a non-exhaustive list of circumstances in which a domain name could be considered to be registered and used in bad faith. The most relevant of these:

“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 that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name”.

By its own admission, the Respondent has purchased the domain name <flamesafe.ae> for the purpose of selling the registered domain name. Although the Panel is not aware of the price of the registered domain name, the Panel can reasonably conclude that the Respondent is not reselling the domain names merely in return for out-of-pocket expenses incurred in relation to the domain name.

Equally, the Panel’s attention is drawn to the fact that the Respondent has filed several requests for the registration of domain names that appear to be linked to the fire-fighting equipment (e.g., <fireguard.ae>, <fireprotek.ae>, <fireprotek.co.uk>, and <flameprotek.ae>). This information was volunteered by the Respondent himself. From a quick online search, the Panel has found that “Protek” appears to be a registered trademark or at least trade name. The Panel has also found that “Galloway Acoustics” is in fact the name of a brand.

The Panel sees in this conduct evidence of bad faith, and namely that the Respondent is seeking to register domain names relating to new brands or brands that are being exploited in a specific sector, with the objective of reselling these to parties that would reasonably be interested in the domain names. The registration is again being made with the sole purpose to resell the domain names, and the domain names are blocked, remaining unexploited, until they are resold.

It is therefore clear to the Panel that the domain name <flamesafe.ae> has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, the Complaint against <gallowayacoustics.ae> is denied.

In accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <flamesafe.ae> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist
Date: July 5, 2017

¹ In light of the substantive and procedural similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited authorities decided under the UDRP where appropriate.