WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Olayan Investments Company v. Janice Carver

Case No. D2012-0212

1. The Parties

The Complainant is Olayan Investments Company of Furstentum, Liechtenstein, represented by Shearman & Sterling LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Janice Carver of Sevierville, United States of America.

2. The Domain Name and Registrar

The disputed domain name <o1ayan.com> is registered with Register.it SpA.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 7, 2012, the Center transmitted by email to Register.it SpA a request for registrar verification in connection with the disputed domain name. On February 9, 2012, Register.it SpA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 the Respondent of the Complaint, and the proceedings commenced on February 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2012.

The Center appointed Andrew Brown QC as the sole panelist in this matter on March 7, 2012. 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 disputed domain name <o1ayan.com> was registered on January 12, 2012.

The Complainant states that it is the parent company of the Olayan group of companies, a Saudi Arabian based multi-national enterprise founded in 1947 comprising approximately 50 companies and affiliated entities worldwide. The Olayan group of companies is engaged in a range of distribution, manufacturing, and investment activities. The Complainant asserts that the Olayan name and trademark is widely used throughout the Complainant’s group.

The Complainant is the registered proprietor of a portfolio of trademark registrations incorporating OLAYAN, both as a word and device mark, including the following registrations which have filing dates preceding the creation of the disputed domain name:

- United Kingdom trademark registration no. 2402456 for OLAYAN (word mark), filed on September 26, 2005 in classes 35 and 39.

- United Kingdom trademark registration no. 2402431 for OLAYAN (figurative mark), filed on September 26, 2005 in classes 35 and 39.

- Community trademark registration no. 4653151 for OLAYAN (word mark) filed on September 26, 2005 in classes 35 and 39.

- Community trademark registration no. 8208423 for OLAYAN (word mark) filed on April 8, 2009 in class 36.

- Community trademark registration no. 4659215 for OLAYAN (figurative mark) filed on September 26, 2005 in class 35.

- Community trademark registration no. 8208456 for OLAYAN (figurative mark) filed on April 8, 2009 in classes 36 and 39.

Evidence filed with the Complaint shows that on January 12, 2012 an unsolicited email with the return email address “[…]@o1ayan.com” was received by an unrelated third party. The domain name used in the return email address corresponds exactly with the disputed domain name. The email contained the subject line “Let’s get Started” and sought an investment proposal from the third party. The email was signed off with the name “Khaled Olayan” (the name of the chairman of the Complainant). The Complainant had no involvement with that email.

The Complainant has referred the Panel to:

(a) Evidence of emails (found to be fraudulent) which were similar to the email referred to above using the following domain names: <0layangroup.com> and <khaled--olayan.com> as part of the return email address of the sender. In each case the subject line of the relevant email has also been “Let’s get Started”, the email was signed off in the name of “Khaled Olayan”, and the wording used was almost identical to that used in the email in the present case;

(b) A previous WIPO UDRP panel decision (Olayan Investments Company v. Janice Carver, WIPO Case No. D2011-1623) in which an adverse decision was made against the same Respondent to the current Complaint in relation to the domain name <0layan.com> i.e. where in the domain name the number “0” replaced the letter “O”. Evidence in that case showed that the disputed domain name in issue there had been used in emails which were found to be fraudulent, and which used closely similar language to the email in the present case;

(c) Two further previous WIPO UDRP panel decisions (Olayan Investments Company v. Richard Arteaga and Christine Cochrum, WIPO Case No. D2011-1342, and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar, WIPO Case No. D2011-0128) in which adverse decisions were made against other respondents in relation to the domain names <khaled--olayan.com>, <0layangroup.com>, <olanyagroup-sa.com>, <olayangroup-se.com> and <olayansa.com>. In those decisions, the former panels were referred to evidence of further emails closely resembling the wording in the email in the present case.

The Complainant has posted on its website a warning to users of its site about the ongoing unlawful use of its name.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

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

(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 and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant had registered rights in the trademark OLAYAN as at the date of registration of the disputed domain name by way of its registered trademarks for OLAYAN (which well predate the disputed domain name).

The Panel considers that the disputed domain name <o1ayan.com> is a clear and deliberate typo-variant of the Complainant’s registered trademark by way of the substitution of the number “1” for the letter “L”. The Complainant’s trademark is the dominant component of the disputed domain name. The conclusion that the disputed domain name is a typo-variant, and not simply a similar but independently derived mark, is supported by the fact that the Respondent has been a party to an adverse decision of a previous panel concerning the domain name <0layan.com> which was found to be also a typo-variant of the Complainant’s trademark (Olayan Investments Company v. Janice Carver, WIPO Case No. D2011-1623).

The Panel accordingly finds that the disputed domain name is a deliberate typo-variant of, and therefore confusingly similar to, the trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in the disputed domain name.

The Complainant states and the Panel accepts that it has never given the Respondent any authority to use the trademark OLAYAN or to seek registration of a domain name incorporating it.

There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods. The disputed domain name is not similar to the Respondent’s name, and there is no evidence that the Respondent operates any business under a name that is similar to or the same as the disputed domain name.

The disputed domain name has been used in a return email address domain to fraudulent emails sent in the name of the Complainant.

In the circumstances, the Panel finds that the Complainant has clearly satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, and in the absence of any Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line 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.

The disputed domain name is a deliberate typo-variant of the Complainant’s registered trademark OLAYAN and of the Complainant’s domain name <olayan.com>. It was registered on January 12, 2012 and on the same day was used as a return email in the correspondence headed “Lets get Started” sent ostensibly (but fraudulently) using the name of the Complainant. The fact that such correspondence was sent out the same day as the disputed domain name was created provides strong evidence that it was registered with the purpose in mind of using it for false and fraudulent correspondence using the Complainant’s name and seeking investment proposals. There is therefore both bad faith registration and use of the disputed domain name.

As stated in The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561: “It goes without saying that a Domain Name which has been acquired and used for the purpose of perpetrating a fraud, has been acquired and used in bad faith.”

Further, the Panel takes due note of the fact that the Respondent has been the subject of an adverse decision of a previous UDRP panel in which the relevant disputed domain name (also a typo-variant of the Complainant’s trademark OLAYAN and also used in fraudulent correspondence) was transferred to the Complainant. This indicates a pattern of conduct on the part of the Respondent of registration of typo-variants of the Complainant’s trademark in bad faith.

The Panel is accordingly satisfied that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b) of the Policy.

7. Decision

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 <o1ayan.com> be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Dated: March 21, 2012