Al Waseet International Company for Publication and Distribution S.A.K. v. waseet.net awod alrashed company for tradeing & contracting
Claim Number: FA0904001255810
Complainant is Al Waseet International Company for
Publication and Distribution S.A.K. (“Complainant”), represented by Stephen
H. Sturgeon, of Stephen H. Sturgeon
& Associates, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <waseet.net>, registered with Dotregistrar.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2009.Complainant amended its Complaint, in accordance with the request of the National Arbitration Forum’s request to correctly cite the Respondent’s name and to provide additional credit card payment detail.
On April 3, 2009, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <waseet.net> domain name is registered with Dotregistrar and that the Respondent is the current registrant of the name. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 April 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2009 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 and determined to be complete on May 4, 2009.
On May 11, 2009, Complainant submitted an Additional Submission. Said Additional Submission was timely, and is in compliance with Supplemental Rule 7.
On May 11, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain name <waseet.net> be transferred from Respondent to Complainant.
The Complainant alleges as follows:
The Complainant in the
administrative proceeding is Al Waseet International Company for Publication
Complainant alleges that its investigation of Respondent’s website, via the Wayback Machine at <archive.org> shows that the Respondent has displayed rudimentary non-business websites on the domain name for several years prior to 2007, but not since July of 2007. Complainant alleges that the webpage was clearly only serving as a placeholder, an advertising portal and a pay-per-click revenue source for the Respondent, as a result of the similarity of Complainant’s well-known identity and services. Clearly, no bona fide business activity was being conducted.
Complainant asserts its trademark rights for the Waseet Marks as follows:
A trademark for the term “Al Waseet” registration number 70904, was issued on November 30, 1996.
A trademark for the term “Al Waseet.comlb” registration number 84178, was registered on July 12, 2000.
A trademark for the term “Al Waseela” registration number 91838, was registered on October 1, 2002. Complainant’s Exhibit 11 confirms and describes the transfer of 13 trademarks to the Complainant.
Complainant also has common law trademarks in the Waseet marks as a result of its extensive use and fame of the marks, as used in commerce, to identify the source of origin of its goods and services since 1992. Complainant has expended considerable sums in advertising and marketing, since its inception, and has thus acquired fame and widespread recognition within the Middle Eastern region. Complainant’s marks and domain names are arbitrary and fanciful, and are thus entitled to the highest level of protection. Respondent’s domain is identical or confusingly similar to Complainant’s registered trademarks.
Complainant alleges that Respondent lacks rights in the domain <waseet.net> for the following reasons:
Complainant has exclusive rights to the use of the term Waseet because it has been doing business under the name since 1992. And Respondent registered <waseet.net> in 2002, more than ten years after Complainant began using the Waseet name in commerce, and years after Complainant began registering numerous trademarks for the term.
Respondent is neither an agent nor a licensee of Complainant.
<waseet.net> redirected traffic, and advertisements displayed a link entitled Waseet. Subsequent to July 2007, Respondent has not indicated any plans to conduct a bona fide business activity. Further, Respondent may not show that, prior to the notice of the dispute, that it conducted any bona fide business activity.
The Respondent’s strategy appears to have been for internet users who are searching for information on Complainant’s goods and services to arrive at Respondent’s unrelated webpage, where they will click on one of the paid advertising links. Essentially, a pay- per-click website is nothing more than a monetized domain parking page, and it has long been held that, parking a domain, is not evidence of a bona fide use of the domain.
Respondent is not commonly known by the domain name <waseet.net>.
Complainant alleges the following reasons for its conclusion that Respondent
registered and used the domain name in bad faith.
Respondent’s web pages have improperly intercepted customers seeking Complainant’s goods and services, thereby undercutting the goodwill associated with Complainant’s marks and services. For the same reasons, there is a high likelihood of confusion as to the source of Respondent’s website. It is inconceivable that Respondent was unaware of the nature of Complainant and Complainant’s business as Complainant’s business became well known and famous in the Mid-East during the ten years between the time that Complainant started business and that Respondent registered the domain name.
Respondent made a declaration in his registration with DotRegister that to the best of his knowledge and belief, neither the registration of the domain, nor the manner in which it is directly or indirectly used, infringes the legal rights of a third party. Because Complainant’s trademarks are early searchable online, Respondent’s bad faith registration may be inferred from the declaration in the registration agreement, and the fact that a simple trademark search would have revealed those marks. In addition, the arbitrary and fanciful qualities of the Waseet marks, strongly suggest that Respondent did not independently arrive at the conclusion that <waseet.net> would form a strong foundation for a domain name for an online business, outside of the fame of Complainant’s name. Further, a search for ‘Waseet’ at the top internet search engine Google, returns Complainant's company website as the top result, enabling Respondent to determine that the disputed domain was associated with Complainant. Complainant alleges that Respondent blatantly provided false WHOIS information, which also supports an inference of bad faith. Finally, an inference of bad faith is supported by the Respondent's failure, for a substantial period of time, to make good faith use of the domain name for its business.
The Respondent alleges as follows:
The dispute concerns the domain name <waseet.net> registered on April 26, 2002. The Respondent’s business name is Waseet Al Jazira Trading Services East, which is relative to the disputed domain name. The Complainant’s trademark is the term “Al Waseet”. As a term of two words, “Al” and “Waseet” singly as words, cannot be used to refer to the term Al Waseet.
The Complainant got the ownership of the trademark for the term “Al Waseet” in March 21, 2006 (Annex 10 in Complainant’s file) after 4 years from domain registration in 2002. The Complainant was established on July 22, 2003 (Annex 3 in Complainant’s file) after more than one year from domain registration on April 26, 2002. The Complainant, in an attempt to confuse the Panel, refers to the trademarked term in an inconsistent manner. Respondent also alleges that Complainant’s Annexes 4, 5, & 6 should be ignored.
Respondent alleges that its business name is “Waseet Al Jazira Trading Services Est.” which is mainly an importing and exporting business. Respondent’s registration number 2062016005 is translated from the original Arabic in Annex 2. Respondent’s main activities are trading services, trading contracting, wrapping, packing, and provision of service of cooked and non-cooked foods. Respondent’s business is different than Complainant’s.
Respondent alleges that the two terms in the name “Al Waseet” cannot be separated, in the same way that “Mc” cannot be separated from “McDonald’s” without referring to a different name.
Respondent alleges that Complainant’s Annexes 4, 5 & 6 should be ignored because the investigator’s conclusion is inaccurate that the WHOIS contact information is false.
As proof, the investigator reached the owner’s wife at the designated telephone number. Further, the Respondent received the e-mail and mail of Complainant’s file.
Respondent further alleges that the domain name <waseet.net> is not identical or confusingly similar to Complainant’s mark, in that Complainant’s mark contains common terms, and the word “Al” sufficiently distinguishes Complainant’s mark from Respondent’s domain name, in the circumstances of this case.
Respondent states that it owns <waseet.net> and has rights and legitimate interests in that, the Complainant’s business was established on July 22, 2003, more than one year after Respondent registered domain the name on April 26, 2002; and got ownership of the trademark for the term “Al Waseet” in March 21, 2006; four years subsequent to Respondent’s domain name registration. Respondent offers supporting case law to substantiate its case.
Respondent states that Respondent has not registered <waseet.net> in bad faith, in that Respondent has not registered the domain name in order to prevent Complainant from registering the domain name; Respondent’s domain is not identical or confusingly similar to Complainant’s trademark; the term “Al Waseet” is a generic Arabic name that can be written in various ways, however, the term “Al Waseet” cannot be separated.
Respondent states that he has not offered to sell the disputed domain name to any entity; that Respondent is not a competitor to Complainant; that Respondent was not using the disputed domain name to display links to Complainant’s competitors; and that there was no pay-per-click website. Respondent contends that all contact information in WHOIS is correct.
C. Additional Submissions
Complainant, in its Additional Submission, alleges as follows:
Complainant refutes Respondent’s allegations that the true registrant of the domain name is a completely different company from that listed in WHOIS. The official WHOIS information which Monsour Al-Ali has represented to be true and accurate (when he registered the domain name) is listed in the WHOIS as “waseet.net awod alrashed company for tradeing & contracting”. Monsour Al-Ali now states that the registrant of the domain is “Waseet Al Jazira Trading Services Est.” This is an admission that the original registration is false, and proof that the registrant has acted in bad faith. This new company has no connection whatsoever with the domain name, and does not appear anywhere on the internet, except for on the website that Monsour Al-Ali has recently placed on the domain name. Complainant alleges that this website has been fraudulently placed on the domain name on April 30, 2009, after seven years of dormancy, to mislead the arbitrator.
Complainant further alleges that Monsour Al-Ali is not associated with the company Waseet Al Jazira Trading Services, but is a student at the King Fahd University of Petroleum and Minerals, pursuing a Bachelor of Science degree in Engineering. Complainant asserts that there is additional evidence that Monsour Al-Ali is guilty of violating cybersquatting laws, more than 40 times.
Complainant refutes Respondent’s allegation that the term “waseet” is not confusingly similar to the term “al waseet”. The term “al” is synonymous to the term “the” in front of a word in the English language and does not cause the two terms to be not confusingly similar. Complainant, lastly refutes Respondent’s allegation that trademark rights were obtained after registration of the domain name. The Complainant (and its predecessors and affiliates) possessed bona fide trademark rights and were widely known by the term “Waseet” throughout the region long before Monsour Al-Ali registered the domain name. Complainant supports these allegations through the submission of two additional exhibits, that is Exhibit 10 which indicates the trademark registration of “Al Waseet” under No. 29707, deposited on 18/6/1997 by the sister company “Kuwait United Company for advertising, Publishing & Distribution” for class 15; and by Exhibit 11, purporting to show the certificate of deposition pertaining to the trademark “Al Waseet” in English, registered in Kuwait under No. 93923, on 16/4/2008 by Complainant for class 41.
The Panelist finds as follows:
(1) the domain name <waseet.net> registered by the Respondent is identical or confusingly similar to the trademarks or service marks “Al Waseet” and “Waseet” 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.
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:
(3) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(4) the Respondent has no rights or legitimate interests in respect of the domain name; and
(5) the domain name has been registered and is being used in bad faith.
Complainant has provided evidence (through submission of Annex 7 through Annex 11) of the registration of its “Al Waseet” mark (Reg. No. 70,904) on November 30, 1996 with the Lebanese governmental trademark authority, including an English translation of the registration; as well as evidence of the assignment of the “Al Waseet” mark from its predecessor in interest to Complainant on March 11, 2006 and has submitted an English translation of the assignment. The Panel finds that these submissions evidencing the registration and assignment of Complainant’s “Al Waseet” mark sufficiently establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).
Complainant contends that Respondent’s <waseet.net> domain name is confusingly similar to Complainant’s “Al Waseet” mark because it omits the “al” portion of the mark and adds the generic top-level domain “.net.” The Panel was persuaded by Complainant’s Additional Submission, specifically Exhibits 8 and 9, (representing Arabic and English dictionaries, wherein the word “al” is translated to the English article “the”). The absence of the article “al” (or the) in Respondent’s domain name <waseet.net> does not serve to differentiate it from Complainant’s trademark/service marks of “Al Waseet”. Respondent’s argument likening the situation to the severing of “Mc” from McDonalds and thus arriving at a different name entirely, is not apt. “Mc” is a distinctive and colorful prefix, which has gained fame through extensive corporate advertising, whereas “al” has been defined to be merely a bland article of speech. That is, the severing of “Al” from the trademark/service mark of “Al Waseet” does not distinguish the disputed domain name from the mark, and therefore, the Panel finds that the disputed domain name is confusingly similar to the “Al Waseet” mark under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark merely omits the descriptive term ‘personal.’”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
While Respondent contends that the <waseet.net> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Respondent asserts that Complainant’s Annex 10 shows that Respondent’ registration of the disputed domain name on April 26, 2002, predates by four years, Complainant’s acquired rights in the mark, on March 21, 2006. However, the Panel finds that Complainant’s rights in the mark inure, or relate back, to the initial registration of the mark, rather than rise anew on the date of an assignment. Here, in accordance with Complainant’s Annex Number 7, the term “Al Waseet” was registered by Complainant’s predecessor-in-interest on the 30th day of November, 1996. Thus, a benefit of that assignment was that the initial registration date of November 30, 1996, inured to the benefit of the assignee, that is, Complainant. See Expedia, Inc. v. WhoisGuard
Protected, FA 608223 (Nat. Arb. Forum Jan. 19, 2006) (finding the USPTO assignment of the EXPEDIA mark granted the complainant rights in the mark and those rights dated back to the date the complainant’s predecessor filed the USPTO application); see also SAFTPAY Inc. v. 3Pea Int’l, Inc., FA 1154178 (Nat. Arb. Forum June 2, 2008) (finding the complainant’s evidence of the registration and assignment history of its SAFETPAY mark with the USPTO granted the complainant rights in the mark dating back to at least the date the trademark application was initially filed).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug.
18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject’s domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name despite the WHOIS information, which lists Respondent as “waseet.net awod alrashed co for tradeing & contracting.” Complainant also asserts that it has not licensed Respondent to use its “Al Waseet” mark. Respondent has offered no corroborating evidence to support the WHOIS information. To the contrary, Complainant has pro-offered the results of a Google search that ascertains that there is no finding of such a corporate name on the internet, other than on Respondent’s webpage, and therefore, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s
WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Furthermore, Complainant offers evidence to show that Respondent is using the disputed domain name to redirect Internet traffic to pay-per-click websites that advertise and provide goods and services identical to the goods and services provided by Complainant. The Panel has examined Complainant’s Annex 4, which consists of Respondent’s web page displayed on the domain name <waseet.net> on July 7, 2007 and the translation of Annex 4, contained in the Affidavit under Oath in Annex 5. The Panel concludes from this examination, that Respondent’s content is a mere device to redirect Internet traffic, such as searches for auto and personals advertising, to compensatory websites that directly compete with Complainant’s classified advertising. The Panel finds that this use of the disputed domain name is not a bona fide offering of goods under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant has offered credible proof that Respondent has used the disputed domain name to compete with Complainant’s business through the operation of a pay-per-click website that included links to Complainant’s competitors. This evidence of hi-jacking consists of Complainant’s Annex 4, that is, pages from the website of <waseet.net> on July 7, 2007, and as translated in Annex 5. The Panel finds that these actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iii), and is not persuaded otherwise by Respondent’s revised web pages posted in 2009 for import and export services. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
enumerating 19,670 on Respondent’s competing 2007 webpage is credible evidence
that Respondent has used a confusingly similar domain name with the intent to
profit from the receipt of referral fees. This 2007 webpage provides almost no
independent content and is merely a portal for classified advertising in such
competing fields as automobiles and personals. The Panel has drawn an inference
from the Counter on Respondent’s webpage, that not only did Respondent intend
to profit from the receipt of referral fees, but that Respondent also
presumably received referral fees. The Panel finds that this competing
registration and use of a similar domain name or trademark/service mark,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Complainant submits that it hired an investigator to confirm the validity of Respondent’s WHOIS information. Complainant provides an affidavit (Annex 5) stating that the investigator was unable to verify that the WHOIS contact information belonged to Respondent. The affiant is a lawyer, working in a law firm, who attests to the provision of evidence regarding the accuracy of information provided in regards to Respondent’s domain name registration. Affiant conducted independent investigation by telephone, and secondary investigation through the Ministry of Trade and Industry. His telephone investigation revealed that the contact telephone number is a residence and that the number belonged to King Fahd’s University. Complainant has elsewhere provided credible evidence that Mr. Al-Ali was a student at said University. The affiant requested the Ministry of Trade and Industry to conduct a search and review of information regarding “Awod Al Rashed Company for Tradeing & Contracting.” The Ministry reported that there is no such name registered in the computer of the Ministry. As this affidavit constitutes credible proof that Respondent has provided incorrect WHOIS contact information, the Panel finds that Respondent has engaged in additional bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waseet.net> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq.,
Dated: May 25, 2009
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