Al Waseet International Company for Publication and Distribution S.A.K. v. National Al-Waseet
Claim Number: FA0909001283505
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.com>, registered with Network Solutions, Inc.
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.
Bruce E. O’Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 10, 2009.
On September 11, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <waseet.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On September 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 13, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 8, 2009.
On October 20, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.
Complainant requests that the Domain Name at issue be transferred from Respondent to Complainant.
Complainant refers to Al Waseet International Company for Publication and Distribution S.A.K. v. waseet.net awod alrashed company for tradeing & contracting, FA 1255810 (Nat. Arb. Forum May 25, 2009) as involving virtual identical issues. In that case, the panel ordered the transfer of the domain name <waseet.net> to Complainant.
Complainant began its
first operation in
International evolved into a Kuwaiti Closed Shareholding Company, established
in July 2003 as the corporate holding for Waseet and all its subsidiaries. AWI
is currently operating from
Complainant is the owner of numerous registered and common-law trademarks (collectively, the “WASEET Marks”).
Some of the WASEET Marks are
A trademark for the
term AL WASEET,
A trademark for the
term AL WASEET WWW.ALWASEET.COM.LB,
A trademark for the
term AL WASEELA,
Complainant’s ownership of the WASEET Marks is set forth in additional documents of record.
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 or origin of its goods and services since 1992. Complainant has expended considerable sums in advertising and marketing since its inception. It has acquired fame and widespread recognition within the Middle Eastern region.
Complainant has obtained its trademarks and related Internet domain names in connection with Complainant’s business as a leading provider of services. Complainant offers its goods and services at retail to the general public worldwide.
Respondent has no legitimate rights in the Domain Name
Respondent is neither an agent nor a licensee of Complainant, and therefore has no right to the use of the WASEET Marks in its Domain Name.
Respondent registered the Domain Name in 1998, more than 5 years after Complainant began using the WASEET name in commerce and years after Complainant began registering numerous trademarks for the term.
Respondent’s Domain Name is identical or confusingly similar to Complainant’s registered trademarks.
Respondent has used the Domain Name to display advertisements that have advertised and provided, among other things, goods and services identical to the goods and services provided by Complainant, thereby blatantly infringing on Complainant’s well-established trademark rights. The websites that Respondent has maintained on the domain name are rudimentary advertising. That is, Internet users who typed the Domain Name into their Internet browsers would be displayed the advertisements.
Respondent is not commonly known by the Domain Name.
Respondent has never been licensed or otherwise authorized by Complainant to use WASEET Marks.
Respondent cannot demonstrate legitimate rights because Respondent is not making a legitimate, non-commercial use of the Domain Name.
Complainant recently conducted an investigation in order to analyze the nature and the activities of the Respondent with respect to the Domain Name. The first component of the investigation was to conduct a review of the history of the web pages that Respondent has displayed on the domain name. The nature of the Respondent’s websites displayed on the domain name was examined utilizing the WayBack Machine at archive.org. It was discovered that the Respondent has displayed rudimentary websites displaying a variety of advertisements for a number of years. Some of the products and services are products and services that are marketed by the Complainant, as evidenced by Respondent’s web site dated August 30, 2009.
Furthermore, Complainant’s investigation included an analysis of the bona fide nature of the Respondent, i.e., the entity that is listed as the registrant. Investigation was conducted in order to determine whether there was any company of the name of “National Al-Waseet” as Respondent has set forth in the WHOIS information. There was no record of any company registered by this name in government records. The inescapable conclusion of the investigation was that Respondent has provided erroneous WHOIS information. There is not any company by the name of “National Al-Waseet” as stated in the WHOIS information. Furthermore, the use of a “hotmail” email address as a contact email address is also indicative of the fact that Respondent is not a bona fide company. The use of free hotmail accounts is typical of the actions of a cybersquatter and not characteristic of a bona fide company. Furthermore, a post office box is given as the mailing address. This is also characteristic of cybersquatters. A bona fide company would have a bona fide physical mailing address.
Respondent should be considered as having registered and used the Domain Name in bad faith
Complainant’s various registered and common law trademarks entitle Complainant to priority use of the term WASEET as a domain name.
Respondent could not have been unaware of Complainant’s websites and extensive use of its trademarks.
Respondent’s domain is identical or confusingly similar to the aforementioned trademarks in which the Complainant has exclusive rights.
Respondent has used the domain to intentionally attract, for commercial gain, users to its advertising website by creating a likelihood of confusion with Complainant’s WASEET Marks and domain names.
Respondent’s web pages have operated as an illegal roadblock or detour that improperly intercepts customers who are seeking Complainant’s goods and services and diverts them to Respondent’s web site, thereby undercutting the good will associated with Complainant’s marks and services.
For the same reason, there can be no question but that there is a high likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site with Complainant’s trademarks. Respondent’s pay-per-click website markets goods and services similar to those offered by Complainant.
inconceivable that Respondent was unaware of Complainant and the nature of
Complainant’s business when Respondent registered the Domain Name or at the
time of subsequent re-registrations. By
the time Respondent registered and reregistered the Domain Name, Complainant’s
WASEET business and web sites had become extraordinarily large, well known and
famous throughout the
Even if Respondent did not have actual knowledge of Complainant’s trademarks and domains (which is highly doubtful), in registering the Domain Name with registrar Network Solutions, LLC, it agreed to the following provision:
“You further represent that, to the best of your 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 available online, Respondent’s bad faith registration may be inferred from that representation in the registration agreement.
Respondent’s constructive knowledge of Complainant’s WASEET Marks is further established by the fact that Complainant’s trademarks are publicly available online and a simple trademark search would have revealed those Marks. Even assuming that Respondent did not have actual knowledge of Complainant’s Marks (a fanciful assumption), Respondent’s constructive knowledge is sufficient evidence of bad faith registration.
In addition, the arbitrary and fanciful qualities of the WASEET Marks, strongly suggest that Respondent did not independently arrive at the conclusion that the Domain Name would form a strong foundation for a domain for an online business, because the Domain Name is not an obvious choice of name, apart from its obvious association with Complainant’s long-established and famous business.
Further, a search for “waseet” at the top Internet search engine, Google, returns Complainant’s website as the top result, enabling Respondent to determine that the domain was associated with Complainant.
In light of the foregoing, Respondent registered the Domain Name with actual and/or constructive knowledge that it was identical to Complainant’s registered WASEET Marks and to Complainant’s registered Internet domain names. Therefore, the Domain Name was registered and is being used in bad faith.
Respondent cannot demonstrate lack of bad faith.
Respondent may not show that, before any notice of the dispute, it used the Domain Name in connection with a bona fide offering of goods or services. Respondent’s use of a domain name that is identical or confusingly similar to Complainant’s registered trademarks is not a bona fide use that could establish that Respondent has any rights in the domain.
Respondent blatantly provided false WHOIS information. Furthermore, there is not any company by the name of the registrant. False information and Respondent's failure to provide correct and current contact information in connection with the domain name registration supports an inference of bad faith.
Respondent’s inability to provide Complainant with reliable contact information violates its registration agreements with Network Solutions, LLC that states that:
“Provision of Registration Data. As part of the registration process, you are required to provide us with certain information and to update this information to keep it current, complete and accurate. This information includes: your full name, postal address, e mail address, voice telephone number, and fax number if available; the name of an authorized person for contact purposes in the case of a registrant that is an organization, association, or corporation.”
Respondent’s pattern of behavior in continuingly providing false address information for the purposes of the domain name registrations is in breach of the Respondent’s warranty under paragraph 2(a) of the Uniform Policy. Such behavior is consistent with cybersquatting and demonstrates bad faith registration and use on the Respondent’s part.
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." Although Respondent has owned the domain name for a period of time, Respondent has yet to use it for any legitimate purpose.
Respondent is National Alwaseet Office which is a fully owned branch subsidiary of Yousif H Alhamdan Trading Co. Ltd (YAHTco), which is a legal entity registered under the Saudi law. For more information about YAHTco group, please visit www.waseet.com/yaht.htm.
National Alwaseet Office and YAHTco group are
located in, and have mailing and physical addresses in
WASEET is an Arabic word; its literal English
translation is "Mediator" and ALWASEET is "The Mediator."
The main business/ job of National Alwaseet Office is a brokerage function,
i.e., to mediate or arrange the selling and acquisition of businesses in
National Alwaseet Office has official Commercial Registration (CR) from the Saudi Ministry of Commerce and Industry as a fully owned branch subsidiary to Yousif Hamdan Alhamdan Trading Co. Ltd. first established on Sep.17, 1989. Respondent celebrated our 20thanniversary just few weeks ago.
National Alwaseet Office (CR) clearly states its licensed and approved activities as follows: "Provides commercial services, marketing and export for others; installs, operates and maintains computer systems, equipment and networks; provides application systems and data bases."
Respondent does not see any similarity between the names or legal objects of the two entities and combination of both names for one similar word could not be interpreted as infringement or to allege that the name was not used for bona fide corporation for bona fide purpose
Complainant was established by its claim on
Nov. 26, 1992 in
The Domain Name was indeed registered in
1998. Since then a tremendous amount of
time and money was invested over many years to provide easy access to its
services of presenting investment opportunities and tenders information to interested
parties. Respondent is running a proper
and successful business in a legal manner and has currently over 16 thousands
subscribers to its website mainly business clients from all over the countries
Respondent has never put the Domain Name in any search engine under any misleading name, neither placing commodities nor products names which do not describe adequately the content. Respondent does not have commercial ads under "hit" classification. The only listed links in the site are for the fully owned branches of the holding company YAHTco, namely: House of Measurement, Dar Alnajat, Dar Aldaris, Dar Alrafeef, and Waseet Fax. One looking at information for each of these subsidiaries finds that it deals only with specified products or services for which Respondent (or its parent company) are the legal and authorized dealer, distributor or agent.
The YAHTco group is well
established with excellent business reputation and, as well as its website, are
well known in
From the WHOIS record, it will be seen that the Domain Name has its own server hosted by redplaid.com. It is not acceptable and nor makes sense that a well established business group like Respondent with high reputation to reserve the Domain Name only for resale profit while paying such high rental cost instead of hosting it at a substantially less cost.
Complainant’s argument about the confusing
name is not valid and there are many entities around the world with names
consisting one similar word or more and are not considered as violation or
infringement, unless the name is typical and is legally protected by
registration under intellectual property law. For example mediator.com belongs
The Domain Name is not identical or confusingly similar to the complainant registered trademarks. Respondent’s major work or services target the business community that is to mediate the selling and buying of businesses and to provide tenders information which is unlike the Complainant’s major line of work which is publication of "classified ads" targeting the general consumers.
Complainant’s extensive argument that the registration and uses of the Domain Name domain is done in bad faith is not true or even logical for the reasons previously stated
As demonstrated before, Respondent is not, repeat is not, in the business of advertisement of classified ads. So, how can confusion or customers' interception take place with commercial gain?
Respondent is registered under Saudi law and legally owns the Domain Name and is conducting its business in a legal manner. The Domain Name is not identical or confusingly similar to the WASEET marks because Respondent’s major work is to mediate the selling and buying of businesses and provide tenders information mainly for businessmen, which is unlike Complainant’s major line of work of publishing "classified ads" targeting individual customers. Respondent can not see any ground for Complainant to have the right to use the Domain Name and prevent Respondent from this right while Respondent’s use of the name is historically prior to Complainant’s usage. Furthermore, it is surprising that after 11 years, Complainant has discovered that it has a case to claim the Domain Name on baseless grounds of bad faith or misleading information.
The certification required by ¶ 3(b)(xiv) of the Rules is the minimum for the Panel to give weight to the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum for the Panel to give weight to the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.
Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents. The Panel finds that the factual contentions made by Complainant will be given weight as appropriate.
Respondent has not provided the required ¶ 5(b)(viii) certification or any additional document. The Panel finds that the factual contentions made by Respondent will be given little weight.
The Panel finds that Complainant has rights in the WASEET marks and that the Domain Name is confusingly similar to the WASEET Marks. The Panel also finds that the Respondent has rights and legitimate interests in respect of the Domain Name, and makes no findings with regard to the bad faith of the Respondent in registering and using the Domain Name.
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.
Complainant has demonstrated rights in the WASEET marks, by reason of proof of the existence and ownership of its Lebanese Trademark Registration Nos. 70,904; 84,178; and 91,838. See 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
The Panel finds that the Domain
Name is confusingly similar to the WASEET marks. Omission of the letters “al,” which actually
means the term “the” in the English language, fail to create a distinguishing
characteristic in the disputed domain name. See WestJet Air Ctr., Inc. v. W.
Jets LLC, FA 96882 (Nat.
Arb. Forum Apr. 20, 2001) (finding that the
<westjets.com> domain name is confusingly similar to the complainant’s
mark, where the complainant holds the
The findings of the Panel on this element of the Policy are in accord with the Panel in Al Waseet International Company for Publication and Distribution S.A.K. v. waseet.net awod alrashed company for tradeing & contracting, previous cited (“registration of its “Al Waseet” mark (Reg. No. 70904) … as well as assignment to Complainant sufficiently establish Complainant’s rights in the mark … 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…”).
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 domain names.”).
¶ 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Regarding ¶ 4(c)(i), the record does not show that Respondent received any actual notice of the dispute prior to filing of the Complaint. Prior to that date, Respondent was operating a web site in the form demonstrated by Complainant. The question, then, is whether Respondent’s use is a bona fide offering of goods and services.
Complainant bases its case, for the lack of a bona fide offering by Respondent, on constructive notice afforded by its Lebanese trademark registrations and on its contention that Respondent knew or should have known of the WASEET Marks before it began use of the Domain Name.
Regarding Complainant’s Lebanese registrations, the Panel believes that only U.S. trademark registrations are entitled to constructive notice and only in the limited situation where the parties are both resident in and operating in the U.S. See Caliper Techs. Corp. v. NorChip AS, FA 110842 (Nat. Arb. Forum July 10, 2002) (finding a respondent in another country had legitimate interests in the disputed domain name despite the complainant’s registration of the descriptive mark in the United States); see also The Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”); see also Gruner + Jahr Printing & Publ’g Co. v. 2 Ergo Ltd., FA 214463 (Nat. Arb. Forum Jan. 27, 2004) (“Even if [constructive knowledge] were applicable to cases under the Policy, Complainant cannot rely, in relation to activities of non-U.S. persons outside the U.S., on constructive notice under U.S. trademark law arising out of registration of its U.S. marks.”).
Here, the trademark registrations pled
by Complainant are in
Regarding Respondent’s actual or constructive knowledge of the WASEET marks, Complainant relies on the contended arbitrary and fanciful qualities of the WASEET Marks, the results of a Google search for “waseet,” Respondent’s failure to conduct a trademark search before use of the Domain Name, Respondent’s advertising to the same market as Complainant, and Respondent’s registration of the Domain Name after Complainant’s first use of the WASEET Marks.
The Panel does not believe that the WASEET marks are arbitrary or fanciful. As pointed out by Respondent, “waseet” is the Arabic word for “mediator.” The Lebanese trademark registrations of Complainant withdraw WASEET from the public domain only in the form of the specific trademark registered and only for the specific goods and services registered. The Google search results do show that Complainant’s web site is the primary hit for “waseet”, but also show what appear to be numerous third parties using the term as part of their business names.
Although Complainant has not proven its first use of the WASEET Marks, Complainant had rights in the WASEET Marks in 1996 by reason of its first Lebanese trademark registration, prior to registration of the Domain Name in 1998. But that fact means nothing unless Complainant can demonstrate that Respondent knew or should have known of the WASEET marks prior to Respondent’s first use.
There is nothing in the record that
convinces the Panel of the date on which Respondent first made use of the
Domain Name or of the date on which the WASEET marks became well known in the
Nor was Respondent obligated to conduct a trademark search prior to its first use of the Domain Name. See FormLinc Information v. Credit Suisse Grp., FA 96750 (Nat. Arb. Forum Apr. 18, 2001)(“[I]t is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith.”); see also Essex Grp., Inc. v. Song, FA 114664 (Nat. Arb. Forum Jan. 20, 2002)(finding due to the geographical nature of the domain name that no registrant should have had to conduct a trademark search before registering.); see also Am. Med. Response, Inc. v. Advanced Mktg. Res., FA 117380 (Nat. Arb. Forum Sept. 24, 2002) (finding “Respondent cannot be found to have registered the domain name in bad faith on the sole ground that it did not execute a trade name search for the application for a service mark filed by Complainant.”).
Even if Respondent searched today in
It is the nature of Complainant’s
business, and that of Respondent, which is most persuasive to the Panel. Complainant offers a classified ad
service. The ads are grouped into
various categories of interest to the general public, e.g., real estate,
automotive, electronics, technology, hobbies, and other items. Respondent offers a brokerage service through
which businesses advertise for the sale and purchase of commercial and
industrial property and through which requested tenders by the
In conclusion, the Panel finds that Respondent has made and is making a legitimate, bona fide use of the Domain Name. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).
Thus, Complainant has failed to carry its burden of proof under ¶ 4(a)(ii) of the Policy.
The Panel declines to analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Nonetheless, the Panel notes that many of its findings as to legitimate rights and interest would lead the Panel to the conclusion that Complainant has failed to meet its burden of proof under ¶ 4(a)(iii) of the Policy.
Complainant not having established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint be dismissed.
Bruce E. O’Connor, Panelist
Dated: November 2, 2009
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