ITX sarl, and Ziad M. Mugraby v. Tom Steiner
Claim Number: FA0809001222737
Complainant is ITX sarl and Ziad M. Mugraby (“Complainant”), represented by Trent
Martinet, of Davis Graham & Stubbs LLP, Colorado,
USA. Respondent is Tom Steiner
(“Respondent”), represented by Steven L Rinehart,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beirut.com>, registered with Tlds, LLC d/b/a Srsplus.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2008.
On September 3, 2008, Tlds, LLC d/b/a Srsplus confirmed by e-mail to the National Arbitration Forum that the <beirut.com> domain name is registered with Tlds, LLC d/b/a Srsplus and that the Respondent is the current registrant of the name. T Tlds, LLC d/b/a Srsplus has verified that Respondent is bound by the Tlds, LLC d/b/a Srsplus 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 September 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 2008 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 email@example.com by e-mail.
A timely Response was received in electronic format only, and not in hard copy on September 30, 2008. The Response is therefore incomplete under the National ICANN’s Rule 5.
An Additional Submission was received from Complainant on October 7, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
A second Additional Submission was received from Complainant on October 9, 2008. This submission was not in compliance with Supplemental Rule 7, which only allows one additional submission or response to additional submission to be filed per party. This was not admitted as Complainant had already exercised its right to file Additional Submissions.
There was a further round of submissions being “Response to Additional Submission submitted by Respondent on October 14, 2008 and a letter from Complainant dated October 15, 2008. These have not been admitted as continuous rounds of argumentive submissions prejudice the procedure under the Policy.
On October 10, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant submits that the domain name <beirut.com> is identical or confusingly similar to the service mark BEIRUT.COM in which Complainant has rights, that Respondent has no rights or legitimate interest in said domain name and that the domain name has been registered and is being used in bad faith.
Complainant registered the domain name in dispute on July 12, 1995. Since October of 1995, Complainant has utilized <beirut.com> as a source identifier to provide an e-mail portal for thousands of its users. Beginning in 2000, Complainant expanded its <beirut.com> business to include a discussion board, a place to post photos of social events around Beirut; hosting various content for a Beirut- based animal rights group and its supporters; and providing a large chat network over IRC for its customers.
On July 11, 2008, Complainant discovered that its <beirut.com> domain name had been fraudulently transferred without Complainant's knowledge or authority, as detailed below. Respondent's unlawful use of the identical mark <beirut.com> is infringing the mark rights and goodwill Complainant has worked so hard to create in <beirut.com>.
Complainant submits that Respondent has no rights to the domain name <beirut.com> since Respondent fraudulently transferred that domain name from Complainant's account, and then fraudulently registered it in order to benefit from the goodwill that Complainant has developed over nearly 13 years and/or to pursue other unlawful purposes.
Specifically, on or about July 9, 2008, Respondent unlawfully logged into Complainant's eNom, Inc. ("eNom") domain name registration account. After gaining unlawful access, Respondent changed the e-mail address associated with the account to firstname.lastname@example.org, and disabled the registrar-lock option that guards against an unauthorized transfer, which had been turned on. Subsequently, and within minutes, eNom received from the new e-mail address an EPP request for transfer of the domain name, which it automatically granted. TLDS, LLC d/b/a SRSplus/ Network Solutions ("SRSplus") received a request with eNom's EPP from the same user and sent it for approval, again to the new e-mail address email@example.com. Respondent approved the transfer, and Complainant's domain name was fraudulently transferred to SRSplus under Respondent's name. Complainant has never had any relationship to the e-mail address firstname.lastname@example.org (a fact confirmed by the owner of this domain, as discussed below) and would have had no reason to change its contact e-mail address to email@example.com, an address it does not control and never has controlled. Data obtained from eNom, which Complainant submits supports the facts above, is attached as an annex to the Complaint.
Complainant states that when it learned of this fraudulent transfer — which resulted in the hijacking of Complainant's most valued asset — it immediately researched the WHOIS database to determine who had unlawfully transferred and registered Complainant's <beirut.com> domain name. This research revealed that the domain name <beirut.com> was registered to Respondent.
Complainant has never heard of Respondent and Complainant certainly did not authorize Respondent to transfer and register <beirut.com>.
Upon confirming that its domain name and mark had been registered by Respondent, Complainant immediately notified eNom about the fraudulent transfer and unlawful registration. Subsequently, Complainant's attorneys sent demand letters to eNom, with supporting evidence, requesting a reversal of the unlawful transfer. However, eNom has refused to reverse the transfer even though Complainant informed eNom that the transfer had been fraudulently authorized and provided eNom with evidence to support that fact.
Complainant also promptly notified SRSplus about the fraudulent transfer and subsequent unlawful registration of <beirut.com>, and sent a demand letter to SRSplus through its attorneys. SRSplus has similarly refused to restore to Complainant its <beirut.com> domain name and mark that it has used for nearly 13 years.
Historic WHOIS records prove Complainant's continuity of ownership of the <beirut.com> domain name going back many years, and also that Complainant's registration of <beirut.com> was current on the date of the theft. Complainant has submitted documents that it submits are records going back to June 2000 showing ownership of <beirut.com> by Complainant and showing Complainant's registration of <beirut.com> to be current through July 11, 2009. Complainant submits that these records further support Complainant's claim that it has expended substantial resources in developing goodwill associated with its mark and domain name <beirut.com> in an effort to brand its quality web-based services.
when consumers in
Moreover, Complainant submits that Respondent has intentionally replicated Complainant's website content and functionality in an attempt to mislead and convert consumers from Complainant's website for commercial gain and/or in an attempt to dilute or tarnish Complainant's mark. Complainant has submitted screenshots of websites historically and recently operated by each of the Parties to illustrate the similarity of content. Complainant submits that such conduct on the part of Respondent is unlawful and Respondent should not be allowed to benefit from the goodwill of Complainant's mark.
Complainant submits that Respondent's unauthorized access of Complainant's domain name account and its fraudulent transfer and registration of the domain name <beirut.com> is, by itself, powerful evidence of bad faith. Moreover, Respondent's replication of Complainant's website content demonstrates a clear bad faith intent to benefit from the goodwill that Complainant has developed over many years and/or to pursue other unlawful purposes. Respondent is fraudulently using the goodwill of Complainant's beirut.com mark to confuse Complainant's website users/consumers into using Respondent's website as opposed to Complainant's.
addition, Respondent's bad faith transfer and registration of <beirut.com> has allowed it to
obtain information about thousands of Complainant's website users/consumers.
Every day that <beirut.com> is
unlawfully possessed and fraudulently operated by Respondent, Complainant's
website users/consumers are mistakenly entering their private information into
Respondent's fraudulent website (believing it to be Complainant's website)
enabling Respondent to collect usernames, e-mail addresses, passwords, and
other sensitive information about Complainant's website users/consumers. Such
use is not only harming Complainant, it also has great potential for harming
Complainant's website users/consumers. Complainant recently posted a notice to
its customers on beirutone.com and also in
Complainant submits that Respondent's registration and usage of <beirut.com> in bad faith is further evidenced by the obviously false information it has posted on the website to which the domain name at issue resolves. On the "About Us" page on the website Respondent lists two "Contact Address[es]" for their "Beirut Office[s]."
of these addresses is located in
second address is in
"About Us" page also claims that it operated by a subsidiary of
United Internet AG, a German company with worldwide operations including in the
Respondent submits that there is no basis for transferring the domain <beirut.com> to Complainant. Complainant is essentially trying to make a claim for civil conversion in this arbitration action, which is not cognizable under the Policy.
Respondent submits that “Complainant is lying about his (sic) association with Respondent”. Complainant and Respondent were business
Respondent denies that Complainant has “owned the subject domain name <beirut.com> since it was registered,” as Complainant alleges. Rather, Respondent submits that Complainant was hired by Respondent to host the disputed domain for the Respondent and design the website hosted on the disputed domain.
Respondent asserts that he has rights in, and is the rightful owner of, the disputed domain name in this case. The Complainant’s principal, Mr. Ziad Mugraby, and Respondent were business partners and worked together for many years.
In early 1995, Respondent desired to start running a website on the disputed domain. The Internet was new at the time, and Respondent did not know how to manage the disputed domain, design the website, host the website, or do anything else necessary to start a business based on the disputed domain. Respondent contacted his friend at the time, Mr. Ziad Mugraby, who was more familiar with technology and communication than Respondent was at the time, and both Respondent and Complainant decided to move forward with a joint venture in which Respondent would contribute the disputed domain, some money, and his time and ideas. Complainant and his employees, Bilal and Salam, would design and host the website.
It was always understood between Complainant and Respondent that Respondent owned the disputed domain, and that Complainant was only the account manager.
Respondent states that he thought that Complainant was a reliable business partner until 2008, when Respondent discovered that Complainant was stealing a huge amount of revenue earned on the disputed domain through Google Adsense, and was not paying Respondent his share of the profits.
Respondent claims that he immediately stopped doing business with Complainant, and changed the DNSs associated with the Disputed Domain.
Respondent alleges that Complainant tried several times to hack into Respondent’s account to try and steal the disputed domain from Respondent by initiating transfers. An employee named Gerald Gorman of the registrar of the disputed domain, SRSPlus, contacted Respondent during the pendency of this dispute and informed Respondent that Complainant had tried repeatedly to change personal information with SRSPlus via telephone, and repeatedly attempted to impersonate the Respondent in this action. Respondent moved the disputed domain to SRSPlus, a subsidiary of Network Solutions, to try and avoid Complainant’s unlawful attempts to steal the disputed domain from his previous registrar.
The former registrar of the disputed domain, eNom, looked into Ziad’s allegations and concluded that Respondent was the rightful owner of the disputed domain and that there was no evidence Respondent had hijacked the disputed domain as Complainant alleges.
The fact that Ziad and Respondent were partners is further evidenced by the registration shown for the domain name <Zikra.com>, showing both Ziad and Respondent as registrants details of which are annexed as an exhibit to the Response.
Respondent states that the disputed domain name was locked with SRSPlus after Complainant threatened them, but then did nothing. The disputed domain name was released by SRSPlus only to again be locked after Complainant filed the Complaint in this action.
Although Complainant and Respondent did not memorialize their partnership in writing, the partnership existed and Complainant and Respondent were in communication for more than ten years. Respondent has attached as an exhibit to the Response documents that he claims are copies of invoices sent from Complainant to Respondent for payment of various websites Respondent hosted with Complainant. Respondent claims that he was expected to pay the registration costs each year for the disputed domain. Respondent has also attached documents that he claims to be copies of photographs in Respondent’s possession of Complainant which Complainant sent to Respondent when they were on friendlier terms.
Respondent claims that Complainant has attempted to make all sorts of
irrelevant and untrue allegations in the Complaint, including that Respondent’s
alleged bad faith registration is evidenced by alleged inaccuracies in
Respondent’s addresses shown on the website established at the disputed domain
name address. Complainant makes the
unsupported statement that Respondent “has had no dealings with these [the
Respondent refers to Complaint’s assertion that Respondent has somehow represented that a German conglomerate providing free email services on the Internet has rights in the disputed domain name, and this somehow establishes Complaint’s alleged rights. Respondent merely used the mail server MX RECORDS provided by this German company to offer email accounts to visitors of the disputed domain. Respondent never represented that partnership existed with any German corporations.
Complainant focuses on similarities between Complainant’s website <beiruitone.com> and the domain name at issue, but these similarities, if any, are irrelevant as Respondent admits Complainant has always had the content shown on both domains, but asserts this content was developed for Respondent’s benefit pursuant to a business relationship which Complainant betrayed.
Respondent submits that the present dispute involves matters not suitable for resolution under the Policy. The National Arbitration Forum should not involve itself with this civil dispute between the parties. See The Center for Computer Technology et al v. Domain Listing Agent, NAF Case No. 495379 (2005) (“This case potentially involves a fraudulent registration transfer, which is likely a dispute that should be determined in a court of law. Thus, the Panel finds that this case is outside the scope of the Policy.”) “The jurisdiction of this Panel is limited to providing a remedy in cases of ‘abusive registration of domain names’, also known as ‘cybersquatting.’” Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.
Even in situations where a disputed domain has been unlawfully
converted as Complainant alleges in this controversy (and Respondent denies),
the Policy does not permit the NAF to adjudicate the allegations. Jimmy
“Clearly Complainant is aggrieved and, if his allegations are correct, rightfully so. However the Policy is not designed to deal with allegations of fraud and theft. It is a limited Policy, dealing with the bad faith registration and use of domain names to profit from the goodwill established by a trademark owner’s rights in a mark. There is generally no hearing available, no opportunity to examine witnesses, no opportunity to conduct cross-examination, and no ability in the Panel to effectively evaluate credibility. While the Panel has little doubt that Complainant has been wronged, this is simply not an adequate forum to address those wrongs.”
It is well-settled that arbitration in an inappropriate forum to bring fraud and conversion claims. The panel in Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 (April 23, 2008), considered that such disputes are more appropriately decided by traditional means, as they turn on questions of fact that cannot be resolved on the basis of the Parties’ statements and documents. See also Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823.
Respondent argues that Complainant offers very little proof of anything, relying almost exclusively in the Complaint upon unsupported allegations of Complainant’s counsel.
Because Complainant maintains he has always had rights in the Disputed Domain, Complainant believes his use of the site now to offer email and searching services is bona fide.
Complainant cannot satisfy paragraph4(a)(i) of the UDRP because the
Respondent acquired rights or legitimate interests in the disputed domain by virtue of the ownership Respondent had in the disputed domain. Respondent, in fact, asserts that Complainant has no legitimate rights or interests in the disputed domain.
Complainant likewise cannot satisfy paragraph 4(a)(i-ii) of the Policy because Respondent did not register, and is not using, the disputed domain in bad faith.
Finally Respondent submits that paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” Ultimately, Complainant’s actions meet the test this Panel should apply because Complainant has attempted to use the Policy to settle a civil claim for conversion.
C. Additional Submissions
Neither Mr. Mugraby nor anyone else at Complainant has ever met anyone named Tom Steiner. And, in fact, Respondent may not even be named Tom Steiner. Rather, it appears Respondent has adopted that pseudonym in order to maintain his anonymity in the fraudulent transfer of <beirut.com> from Complainant to himself, and for these proceedings in an attempt to hide his unlawful activity from the Forum.
Respondent has given a false address.
Respondent’s attorney has never personally met Respondent.
A person called Mr. Gerald A. Steiner lives at the
(i.) He lives at the
(ii.) He has no brother named
(iii.) He has never had any involvement in the domain name or the business of <beirut.com>.
Complainant submits that Mr. Steiner’s affidavit, by itself, proves conclusively that Respondent has attempted to deceive the Panel.
The only “evidence” that Respondent is Tom Steiner is an unnotarized declaration which, unverified by anyone, amounts to nothing more than a piece of paper. Contrary to his express representation in the Response, Respondent has no relation to Mr. Gerald Steiner, who lives at the address Respondent provided to the Panel and to the Registrar of the domain name. Moreover, Respondent provides no explanation why that address was listed on the website as being in Michigan, rather than Missouri, nor for what “business” association he has with the addresses for the deli or the hotel in Alexander City, Alabama, nor for why he falsely claims to be “a major branch of United Internet,” a German company as explained in the Complaint.
When Complainant’s counsel contacted counsel for Respondent, he confirmed that he had never met Respondent in person and that he could not verify that Respondent was in fact “Tom Steiner.”
In short, the conclusion is inescapable – Respondent has appeared before the Forum under a false identity.
It necessarily follows from the above that all of the other allegations and evidence of Respondent are false as well. Complainant proceeded to rebut Respondent’s submissions. The most significant of which are:-
Complainant is a limited liability company formed, owned, and operated by the Mugraby family. No one named Tom Steiner has or ever had any involvement with the company or its business.
Although the Response claims that “[i]n early 1995, Respondent desired
to start running a website on the Disputed Domain,” Resp. ¶ 5, the Internet did
not exist in its current form at that time, and connectivity was particularly
In October 1995, Complainant launched an Internet service provider in
In 2002, Complainant commissioned Samer Shoueiry to design the first web interface for a new portal under the beirut.com brand. Complainant also hired SurfXpress, an Internet Services company, to develop a custom Qmail configuration so that the <beirut.com> mail service and the new website for <beirut.com> could be located on their servers, thus giving it total autonomy from Destination.com.lb. Affidavit of Samer Shoueiry has been submitted with the Additional Submissions.
Contrary to Respondent’s claims of involvement in the business of a <beirut.com> website since 1995, the website <beirut.com> did not exist at all until after it was installed on the servers of SurfXpress in the Spring of 2003.
Respondent includes, a copy WHOIS record for the website zikra.com, which purports to show an association between Mr. Ziad Mugraby and Tom Steiner. The <zikra.com> domain name is registered and owned by the principal of a Lebanese company. When Respondent gained access to Complainant’s Dotster/RegisterAPI reseller account, as described below, he temporarily altered the WHOIS record of Zikra.com by inserting “Beirut Inc., Ziad Mugraby, and Tom Steiner” to falsely suggest a connection.
Dotster/RegisterAPI (http://www.dotster.com) is an ICANN accredited domain name registrar that Complainant maintains a reseller account with. On September 18, 2008 the account was unlawfully accessed by Respondent using a password retrieval tool on the company’s website that mailed the account password to the compromised e-mail address firstname.lastname@example.org. Respondent then registered 24 domain names for periods ranging between 1 year and 10 years and charged over $1200 to the ITX credit card on file with Dotster/RegisterAPI. Complainant then listed said domain names that included a number of domain names that were offensive and included a combination of the names Ziad and Mugraby with offensive “four letter words”. After Complainant contacted Dotster/RegisterAPI and explained to them the situation, Dotster/RegisterAPI cancelled the registration of all 24 domain names and issued a refund to Complainant.
Subsequently, the WHOIS record of <zikra.com> was corrected and the names of “Beirut Inc.” and Tom Steiner, which Respondent had fraudulently inserted, were removed. In reality, no Tom Steiner has any association with the <zikra.com> domain.
Respondent has attached some invoices, which he claims are invoices from Complainant to Respondent. In fact, these invoices were issued by Dotster/RegisterAPI to ITX. Respondent obtained them by phishing during the time he briefly took control of Complainant’s Dotster/RegisterAPI account as described above. In reality, Complainant never did business with Tom Steiner or sent him any invoices.
Finally, Respondent attaches some pictures of Mr. Mugraby, perhaps the most disturbing exhibit in the Response. Respondent obtained these photographs by phishing the account password from Mr. Mugraby’s Friendster account (http://www.friendster.com), a social networking site. Respondent was able to gain unauthorized access to that account by using the e-mail address email@example.com. The four pictures Respondent exhibited all were profile pictures on this account. These pictures prove nothing, other than a further invasion of Complainant’s privacy.
The Panel should not ignore the objectives of the UDRP by allowing itself to be persuaded by Respondent that this case is outside the scope of the UDRP or the Forum’s authority to decide it. Whatever else Respondent may be liable for – conversion, theft, etc. – there can be no doubt that Complainant has proven the elements of its UDRP claim. Respondent is an imposter, a domain name pirate, and he is currently benefiting from the goodwill of Complainant’s mark by tricking Internet users into using the imposter beirut.com Internet site that Respondent currently controls.
Respondent also argues that
Complainant does not have trademark rights in the word “
In addition to utilizing the <beirut.com> domain name as an Internet protocol address to direct users to its Lebanese Internet portal, Complainant utilizes the <beirut.com> domain name as a service mark to promote its services. For example, as stated in the Complaint, Complainant utilizes the mark <beirut.com> to provide Internet, e-mail, and other web-based services to thousands of its website users. True and accurate copies of Complainant’s website where it continuously utilized the mark <beirut.com> to identify its Internet, e-mail, and other web-based services are attached as an exhibit to the Complaint. The screen shots of Complainant’s website in that exhibit clearly illustrate that Complainant uses BEIRUT.COM as a service mark. For instance, such screen shots illustrate the fact that Complainant’s BEIRUT.COM mark and its associated logo are prominently displayed on each page of the website. The primary reason for such placement of the service mark BEIRUT.COM is to identify Complainant as the source of services to its loyal users of Complainant’s Internet, e-mail, and other web-based services.
Respondent argues that Complainant has not presented evidence to the Forum showing its service mark has acquired secondary meaning. But Complainant should not be required to prove secondary meaning because Complainant’s <beirut.com> mark is not generic or merely descriptive. Rather, Complainant’s service mark truly has the ability to create a distinct impression in the minds of its website users. Even if such service mark was generic or merely descriptive, however, Complainant has the ability to prove secondary meaning through survey evidence because thousands of its website users immediately think of Complainant’s Internet, e-mail, and other web-based services when they see the service mark beirut.com. Complainant has not presented such evidence because the urgency of filing for the requested relief did not provide Complainant with the necessary time needed to gather meaningful survey evidence showing secondary meaning. Moreover, the costs of gathering survey evidence to show such secondary meaning are not warranted at this point. Complainant should not have to incur such costs in a proceeding caused by Respondent’s bad faith. Nonetheless, Complainant will present further evidence of secondary meaning to the Forum, if requested.
Finally, Complainant is independently entitled to prevail as a sanction for Respondent’s bad faith conduct in this administrative proceeding. Courts have inherent equitable powers to dismiss an action or enter a default judgment against a party as a sanction for abusive litigation practices and a panel established under the Policy has similar jurisdiction.
ICANN Rule 13 allows the Forum to hold a hearing if it determines “in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.” If the Forum has any doubt that the Respondent has filed his Response under a false identity or if it has any doubt that Respondent’s allegations are completely false, the surest way to resolve those doubts is to require Respondent to appear in person at a hearing before the Forum. Mr. Ziad Mugraby, along with counsel, is willing to appear at a hearing.
Complainant has rights in a service mark BEIRUT.COM which it has in the past used in connection with Internet based information services and email services.
The domain name in dispute was originally registered by Complainant but has since come into the control of Respondent without the authority or consent of Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Preliminary Procedural Issues relating to the Filing of Submissions
Respondent’s Response was submitted only in electronic format prior to the Response deadline; a hard copy was received one day late. Thus the Response is not in compliance with ICANN Rule 5.
Under the National Arbitration Forum’s Supplemental Rule 7, parties are allowed to submit one additional submission or response to additional submission each. In this case, Complainant has submitted two Additional Submissions when Respondent did not submit any additional submissions.
This Panel is of the view that the submission of the Response one day late is a de minimis breach of the procedural rules and does not prejudice either the process or the Complainant.
The Complainant was entitled to file Additional Submissions in accordance with National Arbitration Rule 7 and took the opportunity to do so. It is inappropriate to afford the Complainant yet another bite of the cherry by filing a second round of Additional Submissions. The Panel has therefore admitted the first Additional Submission filed by the Complainant but has not admitted the subsequently filed Additional Submissions, as to allow this is to prejudice the efficiency of the process.
There was a further round of submissions being “Response to Additional Submission submitted by Respondent on October 14, 2008 and a letter from Complainant dated October 15, 2008. These have not been admitted.
Finally, with regard to procedural issues raises, Complainant has requested an Oral Hearing. Complainant has succeeded in establishing its case on the basis of written submissions and it was not necessary to convene an Oral Hearing to decide the matter on the civil standard of the balance of probabilities.
Preliminary Issue - The Scope of the Policy
There are two further preliminary issues to be addressed in this Complaint relating to the scope of the Policy. Firstly the question arises whether there is a bona fide business dispute between the Parties thus putting the matter outside the relatively narrow scope of the Policy. Secondly Respondent has submitted that because there are allegations of fraud and conversion the case is outside the scope of the Policy.
Addressing the issue of whether there was a business relationship between the Parties as alleged by Respondent: Respondent asserts that it was a business partner with Complainant, in that Complainant designed and hosted the website for the disputed domain name, while Respondent submitted the disputed domain, money, and ideas. Respondent further contends that it was understood that Respondent would own the disputed domain name, and that Complainant would act solely as account manager. Respondent asserts that Complainant stole revenue garnered through Google Adsense, and was not paying Respondent’s portion of the profits. Respondent states that it ceased doing business with Complainant and changed information associated with the disputed domain name. Respondent also argues that Complainant attempted to impersonate Respondent several times and hack Respondent’s account to steal the disputed domain name. Respondent also asserts that the former registrar of the disputed domain name, eNom, indicated that Respondent was the rightful owner. Respondent submits evidence of communication and invoices documenting this relationship.
Complainant contends that there was no business relationship, and that Complainant had never heard of Respondent prior to the instigation of the instant dispute. Complainant argues that in 2008, Complainant discovered that its account was hacked and that the disputed domain name was transferred to Respondent. Complainant claims that the registrar failed to reverse the allegedly fraudulent transfer. Moreover, Complainant asserts in its Additional Submission that Respondent has created false evidence of a business relationship, and used deceptive technological means to create “evidence” before the Panel, such as pictures and names of Complainant and its employees, and employees. Complainant states that because there is no business dispute, what remains is a dispute that is meant to be covered by the Policy.
One of the primary questions before the Panel is whether or not the instant case is a business dispute between partners or contractual partners and therefore potentially outside the scope of the Policy.
There is a clear conflict between the Parties as to whether a business relationship ever existed between them. This Panel prefers to believe Complainant’s version of events and finds that the dispute is properly within the scope of the Policy. The Panel reaches this conclusion because Respondent has placed incorrect and misleading information on the website established at the domain address and therefore, in this Panel’s view, Complainant’s denial that there has been any business relationship between the Parties is more credible than Respondent’s unsubstantiated claims that there was such a relationship.
As to the allegations of fraud and conversion, this Panel is of the view that the Policy is designed to determine issues of bad faith albeit on a civil standard and stopping short of findings of fraud. If allegations and conversion were always to put a complaint outside of the scope of the Policy, the Policy would be ineffective. A panel appointed under the Policy cannot determine whether a fraud has been committed but in every case it must determine whether a domain name has been registered and used in bad faith. For that reason this Panel is of the view that the allegations and counter allegations of fraud and the allegation of conversion do not put the dispute outside the scope of the Policy no more than the claim that the domain name was registered in bad faith and the counter-claim of domain name hi-jacking in this case are inappropriate for determination on a civil standard by an administrative panel.
For the above reasons this Panel has decided to consider the Complaint on its merits and leave other matters for other fora as appropriate.
In Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucía.Com Ltd., D2006-0749, (WIPO Oct. 13, 2006), a three member panel, Scott Donahey, Presiding, Marino Porzio and David Perkins, considered the question of a complainant’s rights in a geographical place name as a trade mark where the Complainant owned a number of registrations for trademarks incorporating the name ANDALUCIA and ANDALUZ and the respondent had registered the Internet domain name <andalucia.com>:
In the present case both Complainant and Respondent are using the geographic indication to provide information services pertaining to the geographic region which the term describes. Can this be said to be a trademark use of a term, registered or not, when that term is used in the same manner that one might use a term in a search engine to find information that resides somewhere on the Internet? Even if a term has been registered as a mark, can it really have the status of a mark if it calls to mind not the source of goods or services, but only a geographic location?
Clearly, a geographic indication can acquire secondary meaning and
serve as an indication of the source of goods or services. “Amazon” calls to
mind not only the river and the geographic region through which it flows, but
also the well-known online retailer. In the
However, the Panel is faced with a situation where Complainant holds valid service marks issued by the Spanish trademark authorities. Can ANDALUCIA be said to be the dominant feature of those marks? Although the Panel believes it is a close call, the Panel concludes that at least as to the A ANDALUCIA word and design mark, ANDALUCIA is the dominant feature in the mark. Therefore, the Panel finds that the domain name at issue is confusingly similar to a mark in which Complainant has rights.”
This Panel accepts this quite recent reasoning of a three member panel consisting of eminent and very experienced panelists.
Applying this reasoning to the claims in casu: “Beirut” is clearly a geographical designation; Complainant does not have any registered trademarks or service marks; Complainant claims to be the owner of the service mark BEIRUT.COM, making no claim to the word “BEIRUT” simpliciter; Complainant’s claimed rights arise from use of BEIRUT.COM in the same manner as one might use the term in a search engine to find information that resides somewhere on the Internet. This is the type of situation that was precisely described in the above <andalucia.com> case.
However, Complainant has in addition established an e-ail service and as such,in the view of this Panel,has acquired service mark rights in the name. The rights may not be strong and Complainant has acknowledged that it could have provided more evidence of the reputation that it has developed in the use of the BEIRUT.COM mark, but Complainant has established rights sufficient to satisfy the Policy.
Complainant has therefore satisfied the first element of the test in paragraph 4(a) of the Policy.
On the evidence adduced, it is clear to this Panel that Respondent has no rights or legitimate interest in the domain name. The version of events given by Complainant is more credible and it would appear from the evidence adduced by Complainant that Respondent has fabricated his claims to any business connection with Complainant and rights in the domain name.
Complainant has not granted Respondent any right to use the BEIRUT.COM name in connection with Internet services. Respondent has claimed a business connection with Complainant but in the view of this Panel Complainant has successfully refuted this claim.
Respondent is not making any bona fide business use of the domain name. This is illustrated by the deliberate inaccuracies posted on the website established at the address.
Complainant has made out a prima facie case that Respondent has no such rights or legitimate interest in the domain name, this shifts the burden of proof onto Respondent and Respondent has failed to discharge this burden.
It follows that Complainant has succeeded in the second element of the test in paragraph 4(a) of the Policy.
While there is a clear conflict in the evidence and submissions in this case, on the balance of probabilities Complainant’s version of the facts is to be preferred as it stands up better to analysis.
Complainant is based in
By contrast, Respondent appears to be based
Complainant has provided affidavit evidence that the domain name had been transferred to Respondent without the permission of Complainant at a time when Complainant was the registered owner of the domain name. How exactly this was achieved may be for another forum.
On the basis of the evidence adduced and on the balance of probabilities, Complainant has established that Respondent has registered and is using the domain name in bad faith.
Reverse Domain Name Hi-jacking
In the view of this Panel, Respondent has failed to prove his allegations of Reverse Domain Name Hi-Jacking. On the evidence adduced and on the balance of probabilities, Complainant has a bona fide belief in its rights to the domain name at issue.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beirut.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
Dated: October 24, 2008
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