WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Singer & Friedlander Limited v. Imad Hussein Alkhalil
Case No. D2001-0508
1. The Parties
The Complainants are Singer & Friedlander Limited and Singer & Friedlander Group Plc. Both companies are London, England, based companies. Their principal place of business is in London although they operate extensively throughout England and internationally. The Complainants are represented by Mr. Nick Rose of Field Fisher Waterhouse, Solicitors of London.
The Respondent is identified as Imad Hussein Alkhalil whose details are given according to the Dotster WHOIS database as being of PO Box 3181, Riyadh 11471, Saudi Arabia. The Respondent is unrepresented.
2. The Domain Name and Registrar
The domain name that is the subject of the dispute is .
The Registrar with whom the domain name is registered is Dotster Inc of 11807 N.E. 99th Street, Suite 1100, Vancouver, WA98682, United States of America.
The disputed domain name was registered by the Respondent on February 6, 2000. It is apparently active but does not appear to resolve to any website.
3. Procedural History
On April 5, 2001, the Complaint by the Singer & Friedlander companies was received by email.
On April 9, 2001, the Complaint was received in hard copy.
On April 11, 2001, Registrar Verification was requested.
On April 26, 2001, the Registrar responded to the request.
On April 30, 2001, a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.
On May 23, 2001, a Respondent Default Notification was issued.
On May 30, 2001, a Notification of Appointment of Administrative Panel and projected decision date was notified.
The Panel having accepted the appointment and having considered the papers delivers the following administrative panel decision.
4. Factual Background
A. Complainant
The two Singer & Friedlander companies are involved in the business of merchant banking. What the precise relationship between the two companies is remains a little unclear, as it has not been specifically articulated in the Complaint. It appears that the second Complainant is the parent or holding company of the first Complainant. Whatever be the case and the division of ownership of proprietary rights between them, they both derive historically from a stockbroking business established nearly a century ago in London by Julius Singer.
He was joined soon after by Ernst Friedlander. Shortly after the First World War the business became established as bankers under the style Singer & Friedlander. It became a public quoted company in 1957. From 1987, it became known as "Singer & Friedlander" and the group company has focused on the provision of banking services in the United Kingdom. It or its subsidiaries operate also as merchant bankers, investment bankers, stockbrokers, investment managers and property managers. Financial services are offered to clients worldwide.
The group company is one of the top 250 companies quoted on the London Stock Exchange. The Group manages funds in excess of �10.4 billion. The group's market capitalisation as at the end of the year 2000, stood at �617 million. Together the Complainants employ approximately 540 people throughout the United Kingdom.
Singer & Friedlander is the owner of a number of registered trademarks and pending applications. These appear to be limited to the United Kingdom and no evidence of community marks has been provided. The registered and pending marks all include "SF" or "S&F" as well as "SF Bank". They span the Nice classifications 16, 35 and 36.
Together, the Complainants have some 26 domain names registered with a variety of combinations including , , to name just a few.
B. Respondent
Little is known of the Respondent. It is assumed the Respondent is an individual residing in Riyadh in the Kingdom of Saudi Arabia. Although the Dotster Registrar verification advises the disputed domain is active it does not appear to resolve to a website and is not in use. The Respondent registered the disputed domain in February 2000. Six months later that registration came to the attention of the Complainants who immediately began email correspondence with the Respondent over the disputed domain.
5. The Parties' Contentions
A. Complainant
The Complainants either individually or jointly claim to be the owners of the rights to the mark SF, S&F and SF Bank and any combination using those marks or marks substantially the same and whether or not that may be in conjunction with a website, domain name or any other business that may be taken is likely to be associated with the Complainant.
The Complainants allege that they are one of the leading merchant banks in the United Kingdom. They have for several years become known as and identified by the acronym S&F and secured trademark registration for that in 1986. Their business, it is claimed, is not limited to the United Kingdom but extends worldwide through services such as Visa debit card issuance, business lending, financing, banking and financial services.
The group company has a primary website with a domain name associated with that website registered on July 13, 2000. The website has 110 pages. Together with the 25 other SF prefix domain names and associated websites, Annex F to the Complaint evidences substantial hits and traffic generated by the sites.
The Complainants also claim that "S&F" has acquired the status of a famous mark. It is said it is inherently distinctive and is the means by which any business of the Complainants is identified and distinguished from similar businesses of others.
The Complainants say they have advertised and promoted their business worldwide including internationally under and by reference to the mark "S&F". There is some evidence of this in the Complainant's stationery and internationally circulating media advertising.
The Complainants say that anybody seeing or hearing the mark "S&F" in connection with banking services or services with which the Complainants are known would assume it to be associated with some business of the Complainants. An interested person seeking to access the disputed domain is told the site cannot be displayed.
B. Respondent
The Respondent has defaulted and has not provided a Response to the Complaint. Nevertheless, following correspondence from the Complainants the Respondent replied electronically and the email traffic is in evidence (see Annex H to Complaint).
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has defaulted and placed no evidence nor any submissions before the Panel.
Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to the first ground, the Complainants allege that the disputed domain is confusingly similar to a trade mark in which the Complainants have rights. The Rules do not require that the trade mark rights asserted by the Complainant be registered trade mark rights. They can be common law trade marks rights.
There can be no doubt that the Complainants either individually or jointly have a substantial reputation and concomitant goodwill in the marks "S&F", "SF", "Sfbank" and "S&Fbank" together with any logical combination of those marks together with descriptors whether geographical, descriptive of the business or otherwise. Whilst there is no evidence of registered trade marks beyond the United Kingdom nor of any business activity or customers in Saudi Arabia, the Panel accepts that the goodwill of the Complainant in the marks referred to extends beyond the United Kingdom. It must always be borne in mind that a domain name may be registered with a Registrar anywhere in the world and "owned" by a proprietor or holder in any other country anywhere in the world.
As the domain name which is in dispute may be accessed by a third party in any other jurisdiction, the nationality of the proprietor and the so called domicile of the domain name is largely irrelevant. The Panel accepts that any person wanting to access a country non specific website or domain name for banking services associated or likely to be associated with S & F Bank and finding via a web crawler or search engine would likely assume that that name belonged to or was associated with the Complainants. The Panel therefore finds that ground (i) of Rule 4(a) is made out.
The second ground requires the Complainant to establish that the Respondent has no rights or legitimate interests in respect of the domain name.
As the Respondent has defaulted it has provided no evidence nor any submissions in justification of any claim that it has rights to or legitimate interests in the disputed domain.
There is however in evidence the electronic correspondence between the Complainants and the Respondent. It is to that material to which the Panel refers together with the other material attached to and forming part of the Complaint and in particular the WHOIS name search (Annex J).
The Complainants raise concerns over their reputation and the heavy control exercised by Regulatory Authorities over banking services in England. They fear that the Respondent may seek to use the disputed domain and any website to which it may resolve to divert funds otherwise intended for the Complainants. That is a legitimate concern. Whilst there may be no evidence to date as to whether or not this concern is truly well founded, it would be quite wrong for the Panel not to take account of the difficulties that would be experienced by the Complainants if their fears were to be realised and the practical problems associated with having to enforce their rights against a person identified and known only through an electronic website or domain name and resident in Saudi Arabia.
The Panel is also prepared to take the equivalent of judicial notice that the banking industry in most western countries is highly regulated. That degree of regulation together with the longstanding goodwill of the Complainants is something to which the Complainants are entitled to look to the ICANN Policy to protect.
Of the various factors which could be raised by the Respondent in defence of its registration as given by way of example in the Policy, none are applicable and all have been dealt with satisfactorily by the Complainants in its submissions. None of the matters could be established on the available evidence in favour of the Respondent.
The Complainants have referred to a number of decisions of previous Panellists. The seminal case is Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003. That decision and a number of similar decisions have been followed by other Panellists including the present Panellist on a number of subsequent occasions.
The Panel is accordingly satisfied that "sfbank" is a word or collection of letters identified with the Complainants and unlikely to be chosen by a Respondent innocently as having any connection with the Respondent or a business with which the Respondent has a legitimate interest.
Accordingly the Panel finds that ground (ii) is made out.
The third ground requires the Complainant to establish that the domain name has been registered and is being used by the Respondent in bad faith. In respect of ground (iii) both of these heads must be made out � see Nuclear Marshmallows.
The Complainants allege that the Respondent's activity falls within paragraph 4b of the Policy and relies in particular on subparagraph (i). That lists circumstances which may amount to evidence of registration and use of a domain name in bad faith as including acquisition of the domain name primarily for the purpose of selling it to the Complainant or a competitor in excess of the documented out-of-pocket costs directly related to the domain name.
The Complainants have provided evidence (see Annex J) obtained from a Network Solutions WHOIS name search showing 8 email addresses. An ownership search as at March 30, 2001, (see Annex K) shows 27 domain names registered by the Respondent with Network Solutions. These latter registrations include a number of domains relating to financial services and the inference is invited to be drawn that the Respondent has registered domain names without having any legitimate interest in them for the purposes of selling them. Given the number of registrations and the absence of any evidence that the Respondent has a legitimate interest it is only appropriate that the inference be drawn. Whilst any person acting in a quasi judicial capacity would be loathe to draw adverse inferences in the absence of evidence from a Respondent, the fact that the Respondent has registered with WHOIS email addresses which include "For Sale" "domain sales" and "direct sales" all of which relate to the Respondent and that is coupled with the ownership search of the email addresses for a number of banking services the conclusion is ineluctable that this Respondent is trading in domain names. The WHOIS database search shows an extraordinarily broad group of apparently investment related domain names ranging from entities in the Middle East through to the Indian subcontinent, Greece and China.
But the Complainants' evidence goes further. Under Annex H the Complainants have provided evidence of the email traffic between the Complainants and the Respondent.
This appears to have originated with the Complainants who inquired of the Respondent as to the status and availability of the domain name . To this the Respondent replied electronically indicating that the domain was available for purchase. He invited a price from the Complainants. The Complainants responded indicating they were willing to consider purchase by paying the transfer costs and a nominal sum to cover the time and any reasonable incidental costs of the Respondent. They asked for a price from the Respondent.
It is significant that the response to this from the Respondent was to indicate that several requests for the disputed domain had been received from Israel, Saudi Arabia and France. Accordingly the price quoted as US$150,000. Having regard to the activities of the Respondent identified above it may be assumed that if this statement of several requests having been received is correct then the Respondent is clearly seeking to trade in domain names.
The email traffic thereafter may quickly be dealt with. The parties indulged in correspondence in which the purchase price was dropped by the Respondent until it finally settled at US$11,000 at which point the Complainants had threatened the Respondent with the present ICANN domain name dispute resolution procedure.
It is necessary to rehearse these details in fairness to the Respondent in view of the Respondent's default. Notwithstanding that default it remains incumbent on any Complainant to make out its case.
For the reasons set out above the Panel finds that both heads of ground (iii) are made out. It is particularly noted that even though the Respondent may at the moment simply be squatting on the domain name there is an abundance of Panellists decisions to the effect that such squatting or inactivity nevertheless amounts to use of a domain name. The disputed domain has therefore been registered and is being used in bad faith.
7. Decision
For the reasons set out above the Panel finds:
(a) The domain name registered by the Respondent is confusingly similar to trade marks to which the Complainants have rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
(c) The Respondent's domain name was registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainants.
John Katz
Sole Panelist
Dated: June 13, 2001
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