national arbitration forum




Bank Sohar S.A.O.G. v. Syed Hussain

Claim Number: FA0710001104038



Complainant is Bank Sohar S.A.O.G. (“Complainant”), represented by Al Alawi, of Mansoor Jamal & Co., PO Box 686, Postal Code 112, Ruwi Sultanate of Oman.  Respondent is Syed Hussain (“Respondent”), 15 5th St, Closter, NJ 07624.



The domain name at issue is <>, registered with Names4Ever,



The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.


James A. Carmody, Esq., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2007.


On October 29, 2007, Names4Ever, confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Names4Ever, and that Respondent is the current registrant of the name.  Names4Ever, has verified that Respondent is bound by the Names4Ever, registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").


On November 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On December 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is identical to Complainant’s BANK SOHAR mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant, Bank Sohar S.A.O.G., is a duly incorporated public company in the Sultante of Oman.  Complainant offers various banking services under its BANK SOHAR mark.  Complainant holds a trademark registration with the Intellectual Property Department of the Sultante of Oman for the BANK SOHAR mark (Reg. No. 42830 issued August 18, 2007, filed December 12, 2006). Complainant also operates a website at the <> domain name. 


Respondent registered the <> domain name on March 28, 2006, prior to any evidence offered by Complainant that it had established rights in the BANK SOHAR mark as of that date.



Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."


In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).


Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(3)   the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar


Complainant claims rights in the BANK SOHAR mark under Policy ¶ 4(a)(i) through its registration of the mark with the Intellectual Property Department of the Sultante of Oman.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).


Respondent’s <> domain name is identical to Complainant’s BANK SOHAR mark under Policy ¶ 4(a)(i) as the disputed domain name contains Complainant’s entire mark, with the addition of the generic top-level domain “.com,” which is irrelevant for the Policy ¶ 4(a)(i) analysis.  See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“The panel finds that Respondent’s <> domain name is identical to Complainant’s BIG TOW mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.”); see also Anheuser – Busch, Inc. v. Holix Inc., FA 979961 (Nat. Arb. Forum June 19, 2007) (“The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain (“gTLD”), “.com,” is to be ignored.”).


However, it is clear that the domain name at issue was registered by Respondent on March 28, 2006, the month prior to any evidence of any nature that Complainant had registered, common law or any other rights in the mark BANK SOHAR.  Complainant has failed to provide proof of its own rights in the mark at the time of registration of <>.  While Complainant presents evidence of a current trademark registration with the Intellectual Property Department of the Sultante of Oman for the BANK SOHAR mark, the registration of this mark, and the filing date, both post-date the registration of the <> domain name.  Additionally, while Complainant contends that it announced the formation of its business “on or about” the time the disputed domain name was registered, Complainant did not present any news reports or other documentation which pre-dates the registration of the disputed domain name in order to substantiate this statement.  Therefore, Complainant has failed to demonstrate rights in the BANK SOHAR mark sufficient to satisfy Policy ¶ 4(a)(i).  See Eden Stone Co., Inc. v. Edenstone, FA 992132 (Nat. Arb. Forum July 6, 2007) (“In order to satisfy Policy ¶ 4(a)(i), Complainant must establish rights in the EDEN mark that predate Respondent’s registration of the disputed domain name, which Complainant has not done.”).


Accordingly, Panel finds that Policy ¶ 4(a)(i) has not been satisfied.  Since Complainant has failed in this threshold element, it is not necessary to make findings with respect to the remaining elements of the Policy.



Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.



James A. Carmody, Esq., Panelist

Dated:  December 18, 2007


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