WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Leminar Air Conditioning Industries LLC v. Husain Bhabhrawala

Case No. DAE2017-0005

1. The Parties

The Complainant is Leminar Air Conditioning Industries LLC of Dubai, United Arab Emirates ("UAE"), internally represented.

The Respondent is Husain Bhabhrawala of Dahod, India.

2. The Domain Name and Registrar

The disputed domain name <gallowayacoustics.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 31, 2017. On the same date, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On September 4, 2017, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 5, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – 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 September 8, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 29, 2017.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 6, 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 company holding a business license in the Commercial Register of the Government of Dubai and is a manufacturer of industrial acoustics products in the UAE and Oman. The Complainant's shareholders are listed in its business license as Oasis Investment Co. LLC and Oasis Co. LLC.

In February 2003, the Complainant entered into a license with Galloway Group Limited ("GGL"), a company registered in the United Kingdom of Great Britain and Northern Ireland ("UK") whereby GGL permitted the Complainant to use technical and construction specifications relative to GGL's acoustic silencer range in order to manufacture these items in the UAE and Oman. The license permitted the Complainant "to use Logo and name of Galloway Acoustics on the products manufactured by them under this licencee [sic] agreement." On June 15, 2015, the Complainant and GGL entered a new license in substantially the same terms for a four year period.

On November 22, 2016, UK company number 1090485 was incorporated under the name Galloway Acoustics Limited ("GAL"). GAL's sole shareholder is listed as Overseas Oasis Investment Company Limited. Notwithstanding the discrepancy in company name, the Complainant states that GAL's shareholder is common to the Complainant.

GAL is the owner of the following UK trademarks:

UK00003200716 – word mark GALLOWAY ACOUSTICS, registered on March 3, 2017 in classes 6 and 17.

UK00003229237 – device and word mark featuring a stylized lower case "g" in a blue box next to the words GALLOWAY ACOUSTICS, registered on July 21, 2017.

On May 2, 2017, the Complainant acquired the domain name <gallowayacoustics.com> from the previous registrant.

The disputed domain name was created on December 29, 2016 and the website to which it is pointed is a holding page published by the Registrar which advertises its hosting services.

5. Parties' Contentions

A. Complainant

The Complainant submits the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name has been registered or is being used in bad faith.

The Complainant describes GAL as the affiliate company of the Complainant and notes that it owns UK trademark no. UK00003229237 as described in the factual background section above. The Complainant asserts that "the shareholder of the Complainant and GAL is common (Oasis Investment Co. LLC)" and produces related company documents.

The Complainant submits that that the Respondent registered the disputed domain name "in his individual capacity" and is not involved directly or indirectly in the manufacturing and selling of industrial acoustics products in the UAE or elsewhere under the name and style GALLOWAY ACOUSTICS or any other brand name. The Complainant notes that the Respondent is "not known" and has no client base, marketing or goodwill in relation to such products. The Complainant states that the Respondent has registered the disputed domain name with the intention to mislead clients and customers of the Complainant and tarnish and cause financial loss to the business of the Complainant. The Complainant notes that it is the licensed manufacturer and seller of industrial acoustics products under the name and style of GALLOWAY ACOUSTICS and possesses the "rightful and legitimate interest" over the disputed domain name.

The Complainant states that the Respondent has no business relationship with GGL. The Complainant submits that the circumstances of registration of the disputed domain name, under the name of the Respondent, without any genuine commercial interest or relationship, suggests that this was done in bad faith, to seek valuable consideration, by selling or leasing the disputed domain name to a business competitor of the Complainant or to any other third party.

The Complainant contends that the disputed domain name was registered in order to prevent the Complainant reflecting the GALLOWAY ACOUSTICS trademark in a corresponding domain name. The Complainant adds that the Respondent registered the disputed domain name with the primary intention to disrupt the business of a competitor and has created a likelihood of confusion with clients and customers as to the source of products being manufactured by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 6(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) that the disputed domain name has been registered or is being used in bad faith.

Paragraph 6(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name. Paragraph 6(b) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration or use of the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant asserts that it has two separate rights which are relevant to these proceedings. First, it claims to derive rights from its alleged affiliate company, GAL, which is the owner of UK trademarks nos. UK00003200716 and UK00003229237, and secondly, it claims rights arising from the license in its favor by GGL. The trademarks and license are more fully described in the factual background section above.

It is often convenient in cases under the Policy to review relevant authorities and consensus views of panels under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), due to the substantive and procedural similarities and the greater body of prior decisions available. The principles to which the Panel may have regard on the topic of whether a trademark owner's affiliate or trademark licensee has standing to file a UDRP complaint are discussed in section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). This section notes that a trademark owner's affiliate, such as a subsidiary of a parent or of a holding company or an exclusive trademark licensee is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. It adds that while panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint and that absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.

Dealing first with the UK trademark owner, GAL, the Complainant states that it is affiliated to that company by virtue of having a shareholder in common. To the Panel, this does not appear to constitute the same proximity or degree of relationship as the Complainant being, for example, a parent or subsidiary of the trademark owner or having a relationship with an intellectual property holding company within the same corporate group, as envisaged by section 1.4 of the WIPO Overview 3.0. If such proximity with the trademark owner in this case and/or any particular authorization to bring the Complaint could be inferred by the Panel, the Complainant does not state why this should be so. In any event, there is a more substantive issue with the Complainant's submissions on this topic in that GAL's sole shareholder is noted on its incorporation documents as "Overseas Oasis Investment Company Limited" while the Complainant's shareholders are noted on its business license as "Oasis Investment Co. L.L.C." and "Oasis Co. L.L.C.". The Complainant does not attempt to explain this discrepancy, nor in any event does it provide any evidence of authorization from GAL to allow it to file the Complaint. The Panel is not prepared to infer such authorization from the facts and circumstances on the record.

Turning to the terms of the license by GGL in favor of the Complainant, this does not state that it is an exclusive license, nor does it appear to confer any express entitlement upon the Complainant to act to protect GGL's trademark or trade name. Furthermore, the Complainant has not produced sufficient evidence of the nature and extent of GGL's rights in the name or mark even if the license had been held to be sufficient. Nor does the Complainant produce any separate evidence of authorization from GGL to allow it to file the present Complaint.

In these circumstances, the Panel considers that the Complainant has failed to show standing for the purposes of the first element of the Policy on the present record. This is sufficient to dispose of the Complaint as a whole.

The Panel notes for completeness that it identified from its scrutiny of the companies set out in the Complaint that the Complainant's licensor, GGL, appears to have entered administration on August 1, 2016 and remained in that legal status as at the date when the Complaint was filed. The Complainant did not bring this fact to the Panel's attention nor did it discuss the effect of the administration on the license, if any, and/or explain whether it has sought or obtained any rights, permission or otherwise from the administrator(s) to bring the present proceedings under the Policy. Nor did the Complainant discuss whether any rights, permission or otherwise were obtained from the administrator(s) by its alleged common shareholder in respect of the incorporation of GAL or by GAL itself in respect of the filing and registration of that company's UK trademarks upon which the Complainant relies for present purposes. Had the Panel been content that either the terms of the license or the Complainant's alleged affiliate status were prima facie sufficient to infer authorization by GGL or GAL respectively to bring the present proceedings, the Panel would have sought suitable comment from the Parties on these matters by way of a procedural order.

B. Rights or Legitimate Interests

The requirements of paragraph 6(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel's finding under the preceding head, it is unnecessary for the Panel to address the issue of the Respondent's rights or legitimate interests in the disputed domain name.

C. Registered or is Being Used in Bad Faith

As noted above, in light of the Panel's finding in terms of paragraph 6(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of registration or use in bad faith in detail in the present case.

7. Decision

For the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Date: October 31, 2017