WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Raoul Malak and Ansan Industries Ltd. v. Domains by Proxy, LLC and the Truth Holdings Ltd , Domains by Proxy, LLC

Case No. D2012-2249

1. The Parties

The Complainants are Raoul Malak and Ansan Industries Ltd. of Richmond, British Columbia, Canada, self-represented.

The Respondents are Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (“US”) and The Truth Holdings Ltd of Vancouver, British Columbia, Canada.

2. The Domain Names and Registrar

The disputed domain names <ansangroup.com>, <ansantraffic.biz>, <ansantraffic.co>, <ansantraffic.info>, <ansantraffic.mobi>, <ansantraffic.net>, <ansantraffic.org>, <ansantraffic.ws>, <raoulmalak.co>, <raoulmalak.com>, <raoulmalak.info> and <raoulmalak.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2012. On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 17, 2012, 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 Complainants on November 21, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 26, 2012.

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 Respondents of the Complaint, and the proceedings commenced on November 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 18, 2012.

On January 17, 2013, and individual using the name “Jim Arthur” sent a belated email to the Center, advising that the email dated January 8, 2013 from the Center to the parties informing them of the appointment of the Panel had not been properly received. Jim Arthur advised that the Center’s email had been found in the “spam folder”, and that he had no record of any previous communications about the dispute proceedings. Mr. Arthur requested that the proceedings be stopped, because it had been started without his knowledge or ability to respond. The Complainants sent an email on January 18, 2013 noting that Mr. Arthur is not a party to these proceedings and has no discernible connection to the parties in the proceedings. Mr. Arthur responded on January 31, 2013 by email by stating that he is the person with access to the email address of record for Administrative, Technical and Billing contacts for the disputed domain names. On February 5, 2013, Complainant provided a further email response, noting their belief that “Jim Arthur” is a fabricated name, without any verifiable address or contact information.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 8, 2013. 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, Raoul Malak, is the sole shareholder and principal officer of Ansan Industries Ltd. The Complainant, Ansan Industries Ltd. was incorporated in 1978 in the Province of British Columbia. The Complainants provide traffic control services to various government and businesses in the traffic industry. The Complainant, Raoul Malak, acquired 100% of the shares in Ansan Industries Ltd. in 2004 and has operated the Ansan Industries Ltd. business since that date as its sole shareholder and President.

The Complainants’ business operates under the name Ansan Industries Ltd., with several subsidiary companies, employing 400 individuals and a fleet of 200 lane closure vehicles. The Complainant has also used the names Ansan Traffic Control, Ansan Traffic, The Ansan Group and The Ansan Traffic Group. Some of the Complainants’ clients include the City of Vancouver, the City of Victoria, Telus Communications, and BC Hydro. The Complainant was retained to provide traffic control services for the Vancouver 2010 Winter Olympic Games. The Complainant’s business generates approximately 24 million dollars annually. The Richmond City Chamber of Commerce awarded the Complainants with the Business Excellence Award for 2012.

The Complainants use the business name Ansan Industries Ltd., and the other related names listed above, as well as the personal name of Raoul Malak, in association with the operation of the business, the provision of traffic control services, and the financing of the operation of the business.

The Complainants own several related domain names, including: <ansantraffic.com>, <ansantraffic.ca>; <ansantrafficcontrol.ca>; <ansanindustries.ca> and <ansangroup.ca>, all of which were registered in April, 2010 and June, 2012.

The Respondent registered the following domain names:

<ansangroup.com> - registered on June 15, 2012

<ansantraffic.biz> - registered on June 13, 2012

<ansantraffic.co> - registered on June 13, 2012

<ansantraffic.info> - registered on June 13, 2012

<ansantraffic.mobi> - registered on June 13, 2012

<ansantraffic.net> - registered on June 12, 2012

<ansantraffic.org> - registered on June 13, 2012

<ansantraffic.ws> - registered on June 12, 2012

<raoulmalak.co> - registered on June 13, 2012

<raoulmalak.com> - registered on June 13, 2012

<raoulmalak.info> - registered June 13, 2012

<raoulmalak.org> - registered June 13, 2012

All of the disputed domain names revert to the same website which makes various statements and comments about the Complainants, Ansan Industries Ltd. and Raoul Malak.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The Complainants submit that they own common law rights to the trademarks RAOUL MALAK and ANSAN INDUSTRIES LTD. by virtue of the Complainants’ long and extensive use of the name Raoul Malak and Ansan Industries Ltd. in association with traffic control services. The Complainants also claim common law rights to the marks ANSAN, ANSAN TRAFFIC CONTROL and ANSAN GROUP, which have been used by the Complainants and the Complainants’ predecessor since 1978. The Complainants claim common law rights to the Complainant, Raoul Malak’s name.

The Complainants contend that the 12 disputed domain names contain as the primary and dominant element the words “Ansan Traffic” and “Raoul Malak”. The Complainants submit that these disputed domain names are identical to the Complainant’s common law trademarks RAOUL MALAK, ANSAN, ANSAN TRAFFIC, and ANSAN GROUP except for the addition of the url designation. The Complainants contend that the addition of a url designation does not distinguish the disputed domain names from the common law trademarks held by the Complainants.

Accordingly, the Complainants contend that the disputed domain names are confusingly similar to the Complainant’s common law trademarks for RAOUL MALAK, ANSAN, ANSAN TRAFFIC and ANSAN GROUP.

Rights and Legitimate interests

The Complainants submit that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent has employed a privacy protection shield to hide its true identity, but the Complainants are certain that the Respondent is not commonly known by the names Raoul Malak, Ansan Traffic, Ansan Group or Ansan, and has never been authorized or licensed by the Complainants. The Complainants further contend that the Respondent is using the disputed domain names to revert to a website that makes libelous and injurious comments about the commercial undertakings of the Complainants and has, therefore, not used the disputed domain names for a bona fide offering of goods and services.

Registered and Used in Bad Faith

The Complainants submit that the Respondent has registered and is using the 12 disputed domain names in bad faith, because (i) the Respondent has registered the set of confusingly similar domain names to divert consumers to its defamatory website; (ii) the Respondent has registered confusingly similar domain names to interfere with the business of the Complainants; and (iii) the Respondent has registered confusingly similar domain names and deliberately concealed its identity.

B. Respondent

The Respondent did not formally reply to the Complainants’ contentions, but the Panel has reviewed certain email correspondence as set out below. In terms of a substantive response, the only argument raised on behalf of the Respondent is that “the websites in question…are generic sites” which “do not infringe any copyrights that the claimants may claim to have”

6. Discussion and Findings

The Panel has considered the emails of January 17, 2013 and January 31, 2013 from Jim Arthur (“Arthur”) and the case materials provided by the Center. As a first point, although its email of January 17, 2013 was sent from Respondent Truth Holdings Ltd’s Registrar-confirmed email address, Arthur does not explain what relationship, if any, he has to the Respondents in this proceeding, or the domain names in question. Arthur does not confirm that he is in fact the registrant of the disputed domain names. Secondly, the case materials in this matter show that the Center properly attempted to serve the registrant of the disputed domain names at the fax numbers and email addresses recorded with the named Registrar. The materials that were sent by the Center to The Truth Holdings Ltd. at the address provided by the Registrar were returned to the Center as undeliverable. This is not surprising given that the address is an obvious fabrication.

It is the obligation of the registrant, under the Policy, to ensure that all contact information (i.e. addresses, telephone numbers, fax numbers and email addresses) are real addresses, are accurate and kept up to-date. It is not an appropriate response to claim that a proceeding was conducted without a registrant’s knowledge or without the registrant’s ability to respond, when contact information was inaccurate, out-dated or false. In any event, in this case, the Center correctly notified the Complaint to the Respondents using the email address from which Arthur sent his January 17, 2013 email.

In the circumstances, the Panel finds that the Respondents were properly served at the contact information on record by the Registrar, that no Response was filed, and the Panel will therefore proceed to decide the dispute on the materials filed.

According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights;

(ii) The Respondents have no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainants do have common law trademark rights in the marks RAOUL MALAK, ANSAN, ANSAN TRAFFIC and ANSAN GROUP by virtue of the use of the marks since 2004 in the province of British Columbia in association with traffic control services.

The Panel further finds that the disputed domain names <ansangroup.com>, <ansantraffic.biz>, <ansantraffic.co>, <ansantraffic.info>, <ansantraffic.mobi>, <ansantraffic.net>, <ansantraffic.org>, <ansantraffic.ws>, <raoulmalak.co>, <raoulmalak.com>, <raoulmalak.info> and <raoulmalak.org> are confusingly similar to the Complainants’ common law trademarks RAOUL MALAK, ANSAN TRAFFIC, ANSAN GROUP and ANSAN. The addition of the gTLDs does not serve to distinguish the disputed domain names from the Complainants’ common law trademarks.

Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainants have provided prima facie evidence of the absence of rights or legitimate interests on the part of the Respondents. In the circumstances, many prior panelists have held that the burden shifts to the Respondents to come forward with evidence of a right or legitimate interest in the disputed domain names.

The Panel notes that the Respondents, in this case, did not file any responding materials and therefore did not dispute any of the facts submitted by the Complainants. In light of the evidence filed in these proceedings, the Panel is prepared to find that the Respondents do not have any rights or legitimate interests in the disputed domain names <ansangroup.com>, <ansantraffic.biz>, <ansantraffic.co>, <ansantraffic.info>, <ansantraffic.mobi>, <ansantraffic.net>, <ansantraffic.org>, <ansantraffic.ws>, <raoulmalak.co>, <raoulmalak.com>, <raoulmalak.info> and <raoulmalak.org>. There is no evidence in the case materials that the Respondents are commonly known by the name Raoul Malak, or Ansan. The Panel accepts the Complainants’ contention that the Respondents were never authorized or licensed by the Complainants to use the common law trademarks RAOUL MALAK, ANSAN, ANSAN TRAFFIC or ANSAN GROUP.

Furthermore, in the particular circumstances, the Panel is prepared to find that the Respondents are not using the disputed domain names in a bona fide manner. The 12 disputed domain names all revert to the identical website, which features critical comments about the Complainants and the Complainants’ business practices. This evidence makes it clear that the Respondents were fully aware of the Complainants. As such, the Respondent clearly understood that the registration of the disputed domain names contained as the dominant elements the principal names and various business names, personal name and common law trademarks owned by the Complainants.

In the absence of any responding evidence, the fact that the Respondents’ websites contain critical commentary about the Complainants’ business, does not in the Panel’s opinion constitute proof of legitimate interests: “…the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner's registered trademark or conveys an association with the mark.” (La Rinascente S.r.l. v. Contactprivacy.com/P.R. van der Kolk, WIPO Case No. D2010-0781). As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) this “is especially the case if the respondent is using the trademark alone as the domain name (i.e. <trademark.tld> as that may be understood by Internet users as impersonating the trademark owner.” The Panel notes that it would have been a simple matter to add descriptive language to the domain names to distinguish them from the Complainant’s marks and to avoid the impression of impersonation.

The Panel finds that the Complainants have satisfied the required under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As stated above, the Panel is prepared to find, on the evidence filed, that the Respondents must have been aware of the Complainants common law trademark rights in the marks RAOUL MALAK, ANSAN TRAFFIC, ANSAN GROUP and ANSAN when they registered the 12 disputed domain names in June, 2012. The Panel further concludes that the Respondents acted in bad faith when they registered disputed domain names that contain as the primary elements the Complainants’ common law trademarks for purposes of operating a website which features critical comments about the Complainants and the Complainants’ business.

Furthermore, the fact that the Respondent has hidden its true identity and did not file any formal response supports the Panel’s conclusion of abusive registration. The Respondent’s belated attempts to argue that the domain names were “generic” and non-infringing of copyright were not well-founded.

Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(iii) 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 names <ansangroup.com>, <ansantraffic.biz>, <ansantraffic.co>, <ansantraffic.info>, <ansantraffic.mobi>, <ansantraffic.net>, <ansantraffic.org>, <ansantraffic.ws>, <raoulmalak.co>, <raoulmalak.com>, <raoulmalak.info> and <raoulmalak.org> be transferred to the Complainants.

Christopher J. Pibus
Sole Panelist
Date: February 7, 2013