WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Alam El Phan Co. v. Khalid George Case No. D2009-1346 1. The Parties
Complainant is Alam El Phan Co. of Cairo, Egypt, internally represented.
Respondent is Khalid George of Cairo, Egypt. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2009. On October 12, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On October 12, 2009, Network Solutions, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 16, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 18, 2009.
On October 21, 2009, Complainant filed additional submissions relating to the Complaint. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2009.
The Center received brief, informal email communication from Respondent, described below. However, Respondent did not submit a Response. Accordingly, the Center notified Respondent's default on November 17, 2009.
The Center appointed Nayiri Boghossian as sole panelist in this matter on November 26, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant owns Egyptian registration number 60,089 for the trademark “عالم الفن” in connection with the activity of artistic production and distribution in all forms of CDs, cassette tapes and video tapes, registered October 9, 1984. The disputed domain name presently routes to a parking page displaying links to various music download sites.
The disputed domain name, registered on December 4, 2008, (as confirmed by the relevant registrar). 5. Parties' Contentions A. Complainant
The Complaint's allegations are exceptionally brief. Therefore, they are set out in full: “V. Factual and Legal Grounds
(Policy, paras. 4(a), (b), (c); Rules, para. 3)
“The domain name ALAMELPHAN.COM was registered on 21-12-2001 by Complainant who owns the Arabic trademark “Alam El Phan” and its English transliterated derivatives. The Respondent is believed to have transferred the domain on March 2008 taking advantage of outdated information in domain records.
“The domain name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights;
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
“• The trademark ‘Alam El Phan' is the name under which the complainant
company is registered with commercial record # 5894 in Cairo, Egypt. It also
appears in the registered logo of the company. Notarized registration
documents are presented in Annex C
“• The name ‘Alam El Phan' is an English transliteration of the complainant
Arabic trademark and is the official name under which it represents itself in
English. Another variation is ‘Alam Al Phan' which is a registered domain
name owned by the complainant. “B. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
“• The respondent, who is anonymous to the complainant at their best
knowledge, is not affiliated with the complainant in any way. He/She has no
rights in using the trademark ‘Alam El Phan' or in representing the
complainant. “C. The domain name was registered and is being used in bad faith.
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
“• The respondent is preventing the complainant from reflecting their mark in a
corresponding domain name.”
The additional submissions filed by Complainant on October 21, 2009 substantially augment Complainant's otherwise bare Complaint. Through the submissions, Complainant avers that Complainant registered and used the disputed domain name from 2002 until March 2009, when it was allegedly transferred to a third party without Complainant's consent (“hijacked”). Complainant relates that it discovered the change because in March 2009, the disputed domain name ceased to route users to Complainant's website. Despite making substantial efforts with the then-registrar and others, Complainant alleges, it was unable to regain control over the disputed domain name.
Complainant also avers that an individual in New Jersey, United States of America, contacted Complainant offering to assist Complainant in recovering the disputed domain name, along with other domain name registrations of Complainant that were hijacked at the same time. According to Complainant, based on research with the then-registrar, a New Jersey IP address was used, first to change registration contact information and later, in March 2009, to instruct transfer of the disputed domain name to parties other than Complainant.
Complainant's submissions provide substantial evidence respecting these allegations, in the form of screen shots of the website to which the disputed domain name routed for several years before the transfer, and a chat transcript from a March 30, 2009 session with directNIC, the former registrar. In the transcript, Complainant is seeking information about the unauthorized transfer of the domain name, for which Complainant was previously the registrant. Evidence also includes a membership certificate from the International Federation of Phonogram Industries (“IFPI”) to demonstrate Complainant's commitment to respect intellectual property rights in the conduct of its music and media business.
Among other things, Complainant alleges that Respondent, by providing illegal music download links on the website to which the disputed domain name routes, is damaging Complainant's rights in its trademark “Alam El Phan” as well as its commitments to IFPI. In the supplemental filing, Complainant also alleges that Respondent's suggestion of payment in exchange for recovering the disputed domain name proves Respondent's bad faith.
Based on its Complaint and the supplemental filings, Complainant seeks to recover control over the disputed domain name by transfer under the UDRP. B. Respondent
Respondent did not formally reply to Complainant's contentions and did not submit a Response. The courier service used by the Center to notify Respondent of the Complaint reported that Respondent did not live at the WhoIs-listed address and that the phone numbers from the registrar were invalid.
Respondent's emails, however, demonstrate that Respondent received notice of these proceedings.
On October 19, 2009, Respondent emailed the Center:
“Hello,
“Someone sell this domain name for me, I don't know what is the problem?? I didnt used the domain name in a bad faith?? domain is parking and there is no problems. If the Guy who want to dispute about this domain name : want this domain name, he have to pay me money for this domain name, I think this is not legal, someone sold me a domain name and if someone need it he have to pay not to go for dispute, I will go to my lawyer tomorrow to see what is going on??
“Please send email to the the other party and tell him if he need it he have to pay, this is business and there is no pad faith used by this domain name...
“Regards,
Greg
AlamE”
On October 20, 2009, Respondent emailed the Center again, as follows:
“Dear [Case Manager]
How you doing?? I just need to know, how you can make sure that the Complainant documents are right and not fake??? plus, if the company name is alam el phan and they have a trademark in egypt, why they didn't get a domain .eg ??
There is no trademark or service mark regristered in USPTO, please search in USPTO and see if there is a trademark or service mark under this name (alamelphan)...
There is no prove that I used this domain name in a bad faith, The domain parking to Network solutions parking page, Please check and see…
(Paragraph 4(a)(iii),)
(iii) your domain name has been registered and is being used in bad faith.
There is no prove that I used this domain in bad faith..
Let me explain something for you, In Egypt The arabic names can be spell in many ways, for example, (Alam Elphan) can be (Alam Alphan), (Alam Elfan) OR (Alam Alfan), The documents who sent to you from the Complainant translated from arabic to English, I mean when you translate this name from arabic to English the name may be translated like (Alam Alphan), (Alam Elfan) OR (Alam Alfan). That mean they don't have a prove in English with trademark (alam elphan). If the Complainant have a trademark or service mark in USPTO ( I mean the name alamelphan in English) OK, but they have the trademark or service mark in arabic and the translation to English can come in many words.
Why the Complainant didn't open case againest domain ALAMELFAN.COM ?? Please Check and this domain is forward to parking page??
If you want to make sure about the arabic and there is no rules when we translate the names from arabic to english, please ask any arabian any where. I will give you anther example, my last name is Khalil, its arabian name, some people translate it like ( Khalel) or (Khaleel)…
. . . . [P]lease send me you phone number and your fax number to fax you something...
Thanks,
Have a wonderful day..
George Khalil
the owner of domain ”
In reply to Respondent's inquiries, the Center provided its fax and phone numbers various times. Finally, upon receiving the Center's Notification of Respondent Default, on November 18, 2009, Respondent wrote:
“Hello,
I would like to ask, how you make sure that complaint sent you a real documents?? coz there is many fake documents he sent to you... I would like to send a fax to you, what ius your fax number??
Regards,” 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not make a formal response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).1 A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
Although the registered trademark of Complainant is in Arabic, the Panel finds that the transliteration “alam el phan” for Complainant's “عالم الفن” mark, while only one of a few possibilities, is reasonable.
Respondent has not disputed Complainant's representation that for seven years, until March 2009, Complainant used the website to which the disputed domain name routed for its music business under its English language company name “Alam El Phan.”2 Complainant also submitted archived screen shots demonstrating the prominent use of the name on the website for several years. While it is possible that seven years' use of the website may by itself have created trademark rights in the domain name , the Panel need not go so far to establish confusing similarity in this case.
While there is of course no visual similarity between the Arabic mark and the English transliteration, the Panel finds the similarity in pronunciation undeniable; Arabic speakers would find the English transliteration of the domain name to refer to the Arabic mark. The transliteration into English of Complainant's registered “عالم الفن” mark therefore establishes the existence of Complainant's trademark rights in its company name “Alam El Phan” for the purposes of this proceeding. Bunkasha Publishing Co. Ltd. v. Xman Productions,WIPO Case No. D2002-0781; Auchan v. Oushang Chaoshi,WIPO Case No. D2005-0407; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong,WIPO Case No. D2003-0408.
Panels disregard the domain name suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315. Removing the suffix, the disputed domain name simply consists of the transliterated “Alam El Phan” trademark.
The Panel concludes that the disputed domain name is confusingly similar to a trademark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
As Complainant has shown, Respondent's website presently displays a parking page, with links to third-party websites that commercialize music downloads. By diverting traffic to third parties and their products, the Panel finds that Respondent is using Complainant's marks for its own commercial purposes. 3 See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd., WIPO Case No. D2006-1079.
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use Complainant's trademarks. It does not appear on the record that Respondent is commonly known by the disputed domain name. The Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant's marks for Respondent's own commercial purposes.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds that the Complainant makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the provision of false contact details in violation of the registration agreement, or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that Respondent acquired the disputed domain name with awareness of Complainant's business for the following reasons: (1) the trademark “عالم الفن” was registered in Egypt in 1984 and enjoyed an apparently valid registration in December 2008, when it appears that Respondent or someone else managed to change contact information and later transfer the disputed domain name, which consisted of the trademark's English transliteration; (2) Complainant's website “www.” visibly promoted Complainant's music and media products using Complainant's English company name from at least as early as 2002; (3) prior to the time that the disputed domain name was re-routed to Respondent's parking page, the domain name routed to Complainant's website (which still appears at “www.alama”).
The Panel's inference that Respondent had awareness of Complainant's rights is further supported by the content of Respondent's website, which includes links to music sites, the same commercial area in which Complainant is active under its trademark in Egypt.
The Panel finds therefore that the original domain name registration was made with the intention of trading on the value of Complainant's trademarks.4 The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's mark. Under the circumstances, this constitutes registration in bad faith for purposes of the Policy.5
The Panel also concludes that the circumstances show bad faith use of the disputed domain name by Respondent, as elaborated below.
As noted above, Respondent's website shows that the disputed domain name is used to promote the products of competitors of Complainant. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088). Respondent's failure to provide accurate contact details in accordance with his obligations under the registration agreement, and the absence of filing a Response to the Complaint, provides further support for the Panel's finding of bad faith.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Nayiri Boghossian
Sole Panelist
Dated: December 10, 2009
1 Although Respondent refrained from filing a Response, the Panel has considered the content of Respondent's email communications to the Center.
2 The Panel has undertaken limited research by visiting websites in addition to those to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5. Complainant's website at “www.alama” (using the letter “a” in place of the “e”) also displays Complainant's company name using the transliteration “Alam El Phan,” which, like the disputed domain name, uses the letter “e.”
3 Although Complainant avers that some of the links route users to websites that infringe intellectual property rights, and therefore Respondent is damaging Complainant's trademarks, the Complaint is devoid of proof on this point. However the website to which the disputed domain name routes links to other sites that are in competition with Complainant's business, a fact which the Panel considers below, in connection with the Panel's examination of bad faith.
4 The fact that Respondent listed his address with the registrar as being in Egypt also suggests an awareness of Complainant's rights, even if Respondent may not live there.
5 Although Complainant contends that Respondent's emailed suggestion of payment to recover the disputed domain name is proof of Respondent's bad faith, it is not clear that Respondent sought to recover more than out-of-pocket expenses. Therefore, the Panel does not find that the suggestion of payment, without more, establishes bad faith under the Policy, paragraph 4(b).
Complainant also alleges that Respondent acquired the disputed domain name by someone hacking into Complainant's account and “hijacking” the registration, then transferring it to another registrar. In support of these allegations, Complainant provides chat logs with the registrar from March 2009 when Complainant allegedly discovered the loss of its domain name. The Panel is not in the position to make rulings about those serious allegations and the Panel concludes that it is unnecessary to express a view. The questions for Panel determination in this proceeding are narrowly limited by the terms of the Policy and the Rules.
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