Gulf Pharmaceutical Industries Julphar v. Sarfaraz K. Niazi
Claim Number: FA1005001325683
Complainant is Gulf Pharmaceutical Industries Julphar (“Complainant”), represented by Tamer
Hamed, of Gulf Pharmaceutical Industries Julphar,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <julphar.com>, registered with TierraNet Inc. d/b/a DomainDiscover.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2010.
On May 24, 2010, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <julphar.com> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that the Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 June 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on June 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 7, 2010.
Complainant submitted an Additional Submission on June 10, 2010 that was received and determined to be in compliance with Forum Supplemental Rule 7.
Respondent submitted an Additional Submission on June 13, 2010 that was received and determined to be in compliance with Forum Supplemental Rule 7.
On June 15, 2010, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s contentions are as follows:
The disputed domain name is identical to complainant’
The complainant’s name is Gulf Pharmaceutical Industries Julphar.
Currently, the name Julphar is more popular in UAE as a leading Pharmaceutical Company as the trademark is used in various drug labels produced by Gulf Pharmaceutical Industries Julphar.
Respondent was employed by complainant as Quality Affairs Director from May 28, 1996 and was in charge of “Systems Division”. During the employment tenure, Respondent was handling the Internet as well as the intranet. In 1997 Complainant started the development of their web site, with the active participation of Respondent.
The booking of the domain name was entrusted to Respondent. Complainant discovered belatedly that the domain name was registered by Respondent in his personal name instead of Complainant’s. Respondent had no right to do so and acted in bad faith to dupe Complainant.
Complainant’s website was available under the disputed domain name until Complainant discharged Respondent in 2009. Presently, the following text is displayed: “Previously used by a major pharmaceutical company (1997-2010), this premier URL, julphar.com is now available for sale to the highest bidder”.
Respondent’s contentions are as follows:
Complainant’s trademark is not for the name julphar but rather for an ornamental form.
The legal name of the Complainant, as registered with the government of
Julphar is the former name of the Emirates of Ras Al-Khaimah in
Currently, a large number of businesses in the
Complainant’s employment contract with Respondent ended in June 2009.
Prior to the registration of the domain name to Respondent, the
disputed domain name was registered to another entity in the
Respondent has entirely on his own volition and at his own expense secured the registration of the disputed domain name after making a substantial cash payment through a third party to the previous owners of the domain name. While Respondent did recommend setting up an intranet system, which was established and maintained by the IT department of Complainant, Respondent was a scientist and was not entrusted with the responsibility of registering the disputed domain name.
At the time of the registration of the disputed domain name, Respondent offered in good faith the transfer of domain name to Complainant in return for the reimbursement of the cost of acquisition, at which point Complainant refused to pay and instead required that Respondent allow the use of the domain name by Complainant free of charge for as long as Respondent is either in the employment of Complainant or has a financial relationship with Complainant as a condition for maintaining such relationship.
However, no written agreement was reached. Nevertheless, Complainant did allow Respondent to keep the registration under his name as an assurance for payment.
Respondent has never made personal use of the disputed domain name, he has paid all expenses relating to its acquisition and maintenance, and Complainant has never asked for, or required, Respondent to transfer the disputed name to Complainant except in the present Complaint. Complainant knew all along that the domain name was owned by Respondent personally.
FINDINGS AND DISCUSSION
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.
However, the Panel will first consider a preliminary issue, namely:
· Whether this matter is a business dispute outside the scope of the UDRP.
Preliminary Issue: Business Dispute Outside the Scope of the UDRP
Complainant alleges that Respondent,
while an employee of Complainant, appropriated for himself an asset that
belonged to the employer, namely the domain name. If so, and if
A dispute, such as the present one, between parties who have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy . . . the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of an action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Love, the panel was concerned with a possible cause of action for breach of contract. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a URDP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and evaluate its credibility.
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent acquiescence, and so on.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of corporate law, namely whether Respondent appropriated a corporate asset for his own benefit, and thus falls outside the scope of the UDRP. The Panel thus dismisses the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between the two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
For the reasons presented above, the Panel concludes that this dispute lies outside the scope of the UDRP policy and accordingly relief shall be DENIED.
Judge Karl V. Fink (Retired), Panelist
Mr. Joel Grossman, Panelist
Dated: June 29, 2010
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