WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samih Sawiris v. Domain Privacy Service FBO Registrant / Palm Construction Co., Ltd., John Kurt Meerveld
Case No. D2014-0923
1. The Parties
The Complainant is Samih Sawiris of Giza, Egypt, represented by Amereller Legal Consultants, Germany.
The Respondent is Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States of America (the “USA”) / Palm Construction Co., Ltd., John Kurt Meerveld of Koh Samui, Thailand, self-represented.
2. The Domain Name and Registrar
The disputed domain name <sawirisdevelopment.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2014. On June 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2014, the Registrar 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. On June 4, 2014, the Center received an email communication (apparently) from the Respondent claiming ownership of the disputed domain name and denying having done “any illegal action”. The Center sent an email communication to the Complainant on June 5, 2014 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 June 10, 2014.
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 June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. On June 11, 2014, in response to the notification of Complaint, the Center received two email communications in which what appears to be the Respondent stated that “if you send parcel to thailand is wrong address!”. The Center received from the same email address several informal communications to the Center on June 11, 12 and 13, 2014. The Center received also a communication from a third party on June 16, 2014. No formal Response was received and on July 2, 2014, the Center informed the parties about the commencement of the Panel appointment process.
The Center appointed James A. Barker as the sole panelist in this matter on July 4, 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.
4. Factual Background
The Complainant is a prominent businessman involved in the tourism, hospitality and construction industry among others in Egypt and elsewhere.
The nature of the Respondent’s business is unclear. From evidence in the Complaint (screenshots of the website at the disputed domain name), the Respondent’s website prominently featuring the headline banner “Sawiris Development Company”, together with photographs of various architectures, contains the statement “Sawiris is a business family since 1970. Our principal business are development construction, it is gold key sector to open door to various opportunities from industrial to residential partners.” The website suggests that the “Sawiris Development Company” is based in Bahrain. The website goes on to detail the apparent business interests and investments of “Sawiris”.
The disputed domain name was first registered to a domain name privacy service: Domain Privacy Service FBO. After the Complaint was filed, the Registrar disclosed that the underlying registrant is “Palm Construction Co., Ltd., John Kurt Meerveld” of Koh Samui, Thailand.
The disputed domain name was registered on February 4, 2014.
5. Parties’ Contentions
The Complainant claims that the “Sawiris” name is widely associated, in Egypt and internationally, with the Complainant and his family. A basic Internet search using “Sawiris” as a search term yields over 1.5 million returns, the vast majority of which are in reference to the Complainant and the Complainant’s family. The Complainant and his family are active in a wide array of commercial sectors including hotels and development, construction, telecommunication and media. Their commercial activity is carried out through the Orascom group, which includes Orascom Construction Industries, Orascom Development Holding AG, and Orascom Telecom Media and Technology Holding S.A.E. The Companies of the Orascom group are, for the most part, owned by the Complainant and his brothers, and are managed by them.
The Complainant asserts common law trademark rights in the SAWIRIS name by virtue of its use in trade and commerce in Egypt and internationally. The Complainant says that he owns common law trademark rights in the SAWIRIS name for two reasons. One is that he is personally active in trade or commerce and concludes business transactions under his own name. The Complainant refers to prior panel authority, which found that particular complainants had an obvious interest in protecting their names from commercial use, given that they are well-known businessmen and provided banking and corporate advisory services under their own names. Respectively in this connection, the Complainant refers to Philip Berber v. Karl Flanagan and KP Enterprises, WIPO Case No. D2000-0661 and Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402.
The second reason is that the Complainant claims common law trademark rights in the SAWIRIS name based on its clear attachment to the publicly listed Orascom Development Holding AG and Orascom Hotels & Development S.A.E. (which, together, the Complainant refers to as “Orascom Development”). The Complainant claims that, “according to WIPO case law”, business people hold common law trademark rights in their name if sufficient nexus between their companies’ business and their personal names can be established, notwithstanding that their companies do not carry their names. In this connection the Complainant refers to Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 and Monty and Pat Roberts, Inc. v. Jay Bartell, WIPO Case No. D2000-0300. The Complainant says that his mark is associated with Orascom Development since its foundation 25 years ago. The Complainant is recognized by the media and public as the alter ego and the driving force behind Orascom Development and its projects.
The Complainant claims that the disputed domain name is confusingly similar to his common law mark because it incorporates the Complainant’s mark in its entirety. The addition of the word “development” does not dispel this confusing similarity. Instead, this addition exacerbates the similarity with the Complainant’s mark, given that the name of the Complainant’s company, Orascom Development, also includes the word “development”.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no relevant trademark rights or association with the name “Sawiris”. The so-called “Sawiris Development Company”, displayed on the website at the disputed domain name, is fictitious and does not exist. In this respect, the disputed domain name is being used to misleadingly attract individuals and companies into a feigned business relationship and eventually defrauding them.
The Complainant claims that the disputed domain name was registered and is being used in bad faith. The intention of the Respondent is to create confusion regarding its affiliation with the Complainant and his family with the aim of defrauding Internet users. According to the website at the disputed domain name, the “Sawiris Development Company” is allegedly active in a number of commercial fields world wide. Given the claimed scale of these alleged operations, the “Sawiris Development Company” would form one of the largest companies in the Middle East. However, there is no reference to this company in media coverage on the Internet, which is inconceivable for a business of this size. Further, there is no such company registered with the commercial register of Bahrain, and incomplete contact details are provided on the Respondent’s website. The alleged Chairman of this company is stated to be an individual by the name of “Samir Hemant Sawiris”, but this name is only a variant of the Complainant’s (Samih Sawiris). Further details provided on the Respondent’s website are designed to create a misleading association with the Complainant. The Complainant also provides evidence of actual confusion of a particular business.
The Complainant says that an additional inference of bad faith can be made by the Respondent’s use of an Internet privacy service. When the Complaint was first notified, the Respondent also contacted the Center and asked whether the Center had any ‘clients’ that might be interested in purchasing the disputed domain name. Seeing that an offer to sell was the Respondent’s first reaction when contacted by the Center, it is obvious that the Respondent does not have any genuine interest in the disputed domain name, but uses it solely for the purpose of making a profit.
The Respondent did not file a formal Response in this case. However, in response to the Notification of the Complaint, the Center received an email on June 11, 2014, stating “if sawiris wants to buy something that was FREE!!! on domain market… we need soon offer to buy and we can sell immediately the domain!”.
The Center also received an email (apparently) from the Respondent on June 4, 2014. These emails were received from the email address listed in the WhoIs details for the Respondent, although were not stated to be in the name of the listed registrant (Palm Construction Co., Ltd., John Meerveld). In relation to the disputed domain name, the Respondent stated:
“[…] we bought a few months ago.. because it was FREE DOMAIN
so where is problem ? do you have a client wants to buy ? how much can pay? […]”
The Center received a similar email from the Respondent on June 3, which also stated that “there are many sawiris name. not only him.”
On June 16, 2014, the Center also received an email from an apparent third party (in the name of the originally identified registrant) stating that they did not know what this dispute was about. This email was received from a representative of ‘Palm Group Asia’, and suggests that Palm Group Construction Co Ltd is an entity based in Thailand. As this email was not received from the primary contact email listed in the WhoIs for the Respondent, and disclaims all knowledge of this dispute, the Panel has not considered it further.
The Panel has proceeded to a decision on the basis that the Respondent has had a fair opportunity to respond. The Complaint has been sent to the details listed by the Respondent. The Panel considers that it is reasonable that communications received from those details (the primary registrant details confirmed by the Registrar) are either from the Respondent directly, or from someone authorized to act on the Respondent’s behalf. Nevertheless, taking into account the content of the Respondent’s website and the evidence in the Complaint, the limited emails received from those contact details do not affect the Panel’s conclusions discussed further below.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s name entirely, and the Panel therefore considers that it is confusingly similar. The addition of the word “development” reinforces this similarity. It is a term closely associated with the names of some of the companies with which the Complainant is associated.
The Complainant does not argue that he has registered rights in his name. So the primary issue in this case is whether the Complainant’s surname can be treated as an unregistered mark in which the Complainant has rights. The Complainant argues that he has such rights. The Complainant argues these rights on the basis that he is a well-known businessman and enters business transactions under his own name (although no direct evidence of the latter is provided). The Complainant also argues that there is a sufficient nexus between his personal name and that of Orascom Development Holding AG and Orascom Hotels and Development A.G, to the extent that the Complainant is identified as the driving force behind these companies. The Complainant primarily refers to a number of prior panel decisions to support these contentions, media articles relating to the Complainant, evidence of the scale of the Complainant’s business, and results of a Google search for “Sawiris” (the majority of the results for which refer to the Complainant or his family).
Whether a complainant can establish trademark rights in a personal name is addressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The WIPO Overview 2.0 is commonly referenced by panels as a summary of the prevailing consensus of panel opinion on issues that arise under the Policy. Relevantly, paragraph 1.6 of the WIPO Overview 2.0 provides as follows:
“1.6 Can a complainant show UDRP-relevant rights in a personal name?.
Consensus view: […] “While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”
“However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
There is no doubt that the Complainant has a famous or well-known name. But, as indicated by the WIPO Overview 2.0, this is not enough. There must be evidence that the Complainant actually has used his name in trade or commerce as an identifier of goods or services.
Although well-written, the Complaint provides only limited evidence on this issue. The Complainant’s contention is that he has unregistered rights because he is active in trade or commerce, concludes business transactions under his own name, and is closely associated with the “Orascom Development” companies. Among other things, the Complainant references Philip Berber v. Karl Flanagan and KP Enterprises, WIPO Case No. D2000-0661, in which the panel’s decision was based on the fact that, were anyone to have established a business similar to the then complainant’s under that complainant’s name, the then complainant would have an arguable case in passing off.
The Complainant also refers to Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402 in which the then panel found that a complainant had common law rights in his personal name. The then panel noted that: “It is perhaps important to point out, however, that protection at common law is determined on a case by case basis and depends greatly on the factual basis of each individual case. At common law, as the primary task is to determine if there is confusion in the mind of the consumer, the notoriety of a particular mark is gauged relative to a number of factors, including the territory within which the mark is used, the products for which it is being used, etc..”
Both of these cases cited by the Complainant reached conclusions based, essentially, on a consideration of whether the then complainants had arguable cases for passing off. The basis for a passing off action in a common law jurisdiction has been addressed in a number of prior cases under the Policy. For example, in S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394, the panel noted that a common law trade mark “is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage. In other words, in a common law jurisdiction, if a third party set up in competition with the [c]omplainant under the same or a confusingly similar name, the [c]omplainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.”
On balance, the Panel is prepared to accept that the Complainant has a reputation or goodwill in his SAWIRIS name. The Complainant refers to a number of media articles for support, which relate to the business activities of the Complainant. To some extent, these articles could simply be a result of the fact that the Complainant is a well-known businessman. There was little evidence that the Complainant deliberately uses his name as an identifier of his business - that association appears more a natural outcome of the Complainant’s reputation and the extent of his business interests.
But there is little doubt that the Complainant has an extensive reputation and that the Complainant’s business is closely associated with him personally. And, while the evidence did not strongly suggest that the Complainant deliberately uses his name as an identifier of his business, this does not mean it is not treated as such by the general public. This is particularly reinforced by evidence of actual confusion provided in the Complaint, by an Internet user who mistakenly believed that the Respondent’s website was associated with the Complainant’s business. It is also reinforced by the significant extent and scale of the business with which the Complainant is directly associated.
There is also little doubt that the Respondent has used the disputed domain name to misrepresent an association with the Complainant, and that the Complainant’s reputation could suffer consequential damage (e.g. tarnishment). The evidence therefore suggests that the Complainant could have an arguable case in passing off and that he could establish equivalent unregistered trademark rights.
For these reasons, the Panel finds that the Complainant has established his case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
For the reasons set out further below, the Respondent’s website appears to be deliberately designed to create a misleading association with the Complainant. This cannot be a basis for a right or legitimate interest. The Respondent has submitted no formal reply to contradict this impression.
As such, the Panel finds that the Complainant has established his prima facie case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant provides (undated) evidence of the Respondent’s website. That website is one which suggests that it is associated with the Complainant. It is badged as the website of the “Sawiris Development Company”. It refers to extensive business interests around the world, including in construction. The whole get up of the website is one which appears to suggest that it is closely associated with the Complainant, and the business interests of companies associated with the Complainant.
However, as averred in the Complaint, the claimed scale on this website for the “Sawiris Development Company” would place it as one of the largest companies in the Middle East. The Complainant says there is however no reference to this claimed company in the media. The website also claims that the company is based in Bahrain, but there is no such company on the commercial register of Bahrain. Neither are full contact details provided on the website for the claimed “Sawiris Development Company”.
This evidence, and other evidence provided in the Complaint, strongly suggests that the “Sawiris Development Company” is fictitious. The Respondent’s website is clearly designed to give the misleading impression that this fictitious entity is real, and associated with the Complainant. If the Respondent were a legitimate and large business, as claimed, it would be natural to expect it to reply to the Complaint. However, the Respondent has submitted no reply to these allegations against it.
The obvious inference is that the Respondent registered the disputed domain name to give greater credibility to a deliberately misleading and fraudulent website. The Complainant also indicates (although does not provide direct evidence) that there has been actual confusion by a legitimate business that mistakenly believed the “Sawiris Development Company” to be real, and received requests for “incentive payments” after initial contact with this purported company.
In these circumstances, it is inconceivable that the Respondent has acted in good faith. The use of a domain name to support a pretence of this kind is clearly done in bad faith. Past UDRP panels have had no trouble in finding bad faith in similar circumstances: see recently e.g. FIL Limited v. fidelity-investments-ivanov.com, Domain Discreet Privacy Service / Igor Ivanov, WIPO Case No. D2014-0131; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017. This use of a domain name that is confusingly similar to the Complainant’s mark falls squarely within the type of bad faith described in paragraph 4(b)(iv) of the Policy “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location”.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.
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 <sawirisdevelopment.com> be transferred to the Complainant.
James A. Barker
Date: July 18, 2014