Saudi Arabian Oil Co v. Bander Alotabi
Claim Number: FA1712001763211
Complainant is Saudi Arabian Oil Co (“Complainant”), represented by Kristen McCallion of Fish & Richardson P.C., Minnesota. Respondent is Bander Alotabi (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iktva.com>, registered with GoDaddy.com, LLC.
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.
The Hon. Neil Anthony Brown QC, Terry F. Peppard, Esq., as Panelists and David P. Miranda, Esq., as chair Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2017; the Forum received payment on December 21, 2017.
On Dec 19, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <iktva.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2018 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 postmaster@iktva.com. Also on December 28, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 16, 2018.
Complainant’s Additional Submission was received on January 22, 2018, and Respondent’s Additional Submission was received on January 29, 2018.
On January 26, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed The Hon. Neil Anthony Brow QC, Terry F. Peppard, Esq., as Panelists and David P. Miranda, Esq., as chair Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Saudi Arabian Oil Co., was founded in 1933 and is the largest oil company in the world. In connection with this business, Complainant developed and now runs a program called IKTVA (In Kingdom Total Value Add) to drive increased investment, economic diversification, job creation, and workforce development within the country of Saudi Arabia. Complainant has rights in the IKTVA mark based upon its registration of the mark with the Saudi Arabia General Administration of Trademarks with the Ministry of Commerce and Industry (“MCI”) (Reg. No. 143700883, registered Jun. 1, 2016, filed Jan. 28, 2016). See Compl. Annex 6. Complainant also has common law rights in the mark dating back to at least as early as December 1, 2015. Respondent’s <iktva.com> domain name is confusingly similar or identical to Complainant’s IKTVA mark, as the domain name consists of the mark in its entirety and the added “.com” generic top-level domain (“gTLD”).
Complainant claims Respondent Bander Alotabi, of Saudi Arabia (“Respondent’) has no rights or legitimate interests in the <iktva.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the IKTVA mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the name does not resolve to an active website. Further, though Respondent claims it registered the domain name for “personal use,” the name was registered to “Jubail Industries,” a business, which is contrary to its claim.
It is further claimed, Respondent registered and is using the <iktva.com> domain name in bad faith. The name was registered to ultimately sell it at a premium. Additionally, Respondent has engaged in a pattern of registering domain names containing registered marks, and the current registration is part of this bad faith pattern. Further, Respondent’s failure to make an active use of the name indicates bad faith. Finally, the name was registered with actual knowledge of Complainant’s rights in the IKTVA mark. In fact the registration of the domain name on the date the IKTVA program was officially rolled out indicates opportunistic bad faith.
B. Respondent
Respondent, Bander Alotabi, of Saudi Arabia, does marketing for products of companies in affiliate systems. Respondent concedes that the <iktva.com> domain name is identical to Complainant’s IKTVA mark, but insists its registration of the domain name on December 1, 2015, precedes Complainant’s registration of the mark.
At the time it registered the <iktva.com> domain name, Respondent claims he intended to translate the foreign website <ktva.com> from English into Arabic in order to develop the content of the Arabic web. See Resp. Annex 1 (Evidence of Search for Translators). Respondent initially could not afford a translator for the website but nonetheless turned down purchase offers for the domain name. Upon discovery of Complainant’s IKTVA program, Respondent sent an email to Complainant on June 18, 2016, offering to give the domain name to Complainant because Respondent thought it might not be able to complete its project. See Resp. Annex 2. Complainant did not respond to this email. Respondent has now found a solution to execute its project by making agreements with potential partners.
Respondent did not register or use the <iktva.com> domain name in bad faith. Respondent has not attempted to sell the domain name, and has no intention to do so. Additionally, Respondent’s other registered domain names were not registered in bad faith, but rather in support of marketing for products of companies in affiliate systems. See, e.g., Resp. Annex 5. Also, Respondent does not use advertisements on the website resolving from the <iktva.com> domain name to earn any money. Further, Respondent had no knowledge of Complainant’s rights in the IKTVA mark at the time it registered the domain name.
C. Additional Submissions
Complainant’s Additional Submission was received on January 22, 2018, and Respondent’s Additional Submission was received on January 29, 2018, both considered by the Panel.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the IKTVA mark based upon registration of the mark with Saudi Arabia’s MCI (Reg. No. 143700883, registered Jun. 1, 2016, filed Jan. 28, 2016). See Compl. Annex 6. Registration of a mark with a national trademarks authority is sufficient to establish rights in that mark. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Complainant’s registration of the IKTVA mark with the Saudi MCI is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). Respondent does not dispute Complainant’s rights in its mark either by registration or under the common law.
Since the <iktva.com> domain name was created before Complainant’s MCI filing date, Complainant also claims common law rights in the IKTVA mark for the purposes of Policy ¶ 4(a)(i). Complainant claims it has offered services under the mark since December 1, 2015, and publically announced the IKTVA program at least as early as November 3, 2015. See Compl., Annex 5. Complainant claims its IKTVA program is wide-ranging, and that it registered the <iktva.sa> domain name to provide its services. See Compl. Annexes 4 and 7. The Panel finds Complainant’s contentions to be sufficient, and concludes that Complainant has established common law rights to IKTVA in association with Complainant’s business.
Complainant next argues Respondent’s <iktva.com> domain name is confusingly similar or identical to the IKTVA mark, as the name consists entirely of the mark and the added “.com” gTLD. The addition of a gTLD to a mark is not sufficient to distinguish a domain name from the mark in a Policy ¶ 4(a)(i) analysis. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel determines the <iktva.com> domain name is confusingly similar to the IKTVA mark per Policy ¶ 4(a)(i).
While Respondent argues that its registration of the <iktva.com> domain name predates Complainant’s alleged rights in the 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(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a Complainant’s standing to file a UDRP case, nor a panel’s finding of identical or confusing similarity under the first element. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <iktva.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the IKTVA mark in any way. WHOIS information supports a finding that the Respondent is not commonly known by the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record and the contact information supplied by Respondent identify Respondent as “Bander Alotabi,” and no information on the record indicates Respondent has been authorized to register the domain name incorporating Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <iktva.com> domain name.
Complainant also asserts Respondent’s inactive holding of the <iktva.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage, and has not displayed any content in the two years it has been registered. See Compl. Annex 9.
The Panel finds that the above considerations make out a prima facie case that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
It therefore remains to be seen if Respondent has rebutted that prima facie case. As Respondent’s arguments in that regard seem to the Panel to be substantiually the same as those advanced on the issue of bad faith, the Panel will deal with them in detail in the next section of this decision. Having regard to those matters the Panel finds that Respondent has not rebutted the prima facie case against it and that it has no rights or legitimate interests in the disputed domain name.
Complainant claims Respondent’s registration of the <iktva.com> domain name was part of a pattern of bad faith registration, and was done to prevent Complainant from using its mark in a domain name. A pattern of bad faith registration can be established by a showing that Respondent has registered multiple domain names infringing on famous marks, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant claims Respondent has registered at least 177 domain names including numerous names which include third parties’ famous registered trademarks. See Compl. Annex 11.
Complainant next argues Respondent’s registration of the <iktva.com> domain name on the day Complainant’s IKTVA program was officially rolled out indicates Respondent acted in bad faith. Respondent is based in Saudi Arabia, as is Complainant, and Complainant announced the IKTVA name in a press release a month prior to Respondent’s registration of the domain name. Opportunistic bad faith can be found when the registration of a domain name coincides with a public announcement related to an infringed-upon mark. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)); see also Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Complainant claims it launched the IKTVA program on December 1, 2015, the same day the domain name was registered. See Compl. Annexes 5 and 2. Further, Complainant argues Respondent would have been put on notice the program was forthcoming by early announcements. See Compl. Annex 5. The Panel may look to the circumstances at the date the UDRP Respondent itself acquired the domain name. Merely because a domain name is initially created before a Complainant’s trademark rights accrue does not however mean that a UDRP Respondent cannot be found to have registered the domain name in bad faith. In certain circumstances where the facts of the case establish that the Respondent’s intent in registering the domain name was to capitalize unfairly on the Complainant’s nascent (typically as yet unregistered) trademark rights, panels have found that the Respondent has acted in bad faith in registering the domain name. Such scenarios include registration of a domain name, shortly before or after announcement of a corporate merger. 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, Case No. D2009-0567 (WIPO, 2009); Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, Case No. D2006-0916 (WIPO, 2006); General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, Case No. D2003-0845 (WIPO, 2004). The Panel finds on the evidence, as Complainant argues, that Respondent registered the <iktva.com> domain name because it heard of the proposed launch of Complainant’s new IKTVA program in advance and decided to capitalize on that knowledge for its own benefit. The Panel finds Respondent’s explanation for how and where Respondent derived the name of its website to be unsupported and unpersuasive. The Panel therefore finds on all the evidence that Respondent registered the domain name opportunistically in bad faith per Policy ¶ 4(a)(iii).
As this reason for the registration clearly colors the manner in which Respondent subsequently used the domain name, the Panel also finds that Respondent used the domain name in bad faith.
Complainant further argues Respondent’s failure to make an active use of the <iktva.com> domain name indicates it was registered and used in bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s contention that the domain name does not resolve to an active website. See Compl. Annex 9. The Panel finds Respondent’s inactive holding of the domain name is further evidence of its bad faith per Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Because Complainant has satisfied the elements of Policy ¶ 4(a), the Panel concludes that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iktva.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
The Hon. Neil Anthony Brown QC,
Terry F. Peppard, Esq., as Panelists
and David P. Miranda, Esq., as chair Panelist
Dated: February 7, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page