WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Al Rajhi Banking and Investment Corporation v. Enough Host LLC Case No. D2010-0777 1. The Parties
1.1 The Complainant is Al Rajhi Banking and Investment Corporation of Riyadh, Saudi Arabia, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
1.2 The Respondent is Enough Host LLC of Texas, United States of America. 2. The Domain Names and Registrar
2.1 The disputed domain names and (the “Domain Names”) are registered with Abacus America Inc. d/b/a Names4Ever (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2010. On May 17, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 17, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar appears to have also copied that response to the administrative and technical contact email addressed for the Domain Names.
3.2 Later that day the Center received an email in relation to these proceedings that read as follows:
“Dear All;
I have purchased these 2 domains in the past 2 years as an investment and they are up for sale.
Please inform the complaining party that these 2 domains have been up for sale for years and they are welcome to extend an offer to us and we will more than happy to sell them these 2 domain.
Regards;
Ziad Alramahi.”
3.3 The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on May 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2010. The Response was filed with the Center on June 8, 2010.
3.4 In reply to a statement in the Response to the effect that the Respondent was willing to settle proceedings and transfer the Domain Names in return for payments of the Respondent's “original costs”, the Complainant's lawyer sought clarification of what those costs were. This elicited an email in response from Mr Alramahi on June 10, 2010 that contained the following statement:
“At any rate, both domains cost us about $50,000.00. Like I said before, we are only interested in recovering our original costs and we would be more than happy to turn these 2 domains back to your client.”
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 16, 2010. 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
4.1 The Complainant is based in Saudi Arabia and is one of the largest Islamic banks in the world, which can trace its origins back to 1957. It has total assets of USD 45.867 billion, a paid-up capital of USD 4 billion and in excess of 7,000 employees. It has traded under the “Al Rajhi” name since at least 1978 (and it its predecessors in business appear to have used that name from some earlier date).
4.2 The Complainant operates on the Internet from websites using various domain names, the earliest of which was registered in 1999.
4.3 The Complainant is the owner of various trade marks. They include:
(i) Saudi Arabian registered trade mark 48/937 in class 36 dated 7/3/1428 Hijri1 in the following form:
(ii) Malaysian registered trade mark No 06019408 for AL RAJHI BANK in class 16 dated October 20, 2006; and
(iii) Kuwati registered trade mark no 108749 dated January 4, 2010 in class 36 which takes a similar form to the Complainant's Saudi Arabian trade mark.
4.4 According to the WhoIs details for the Domain Names, was first registered on March 6, 1996 and on August 11, 1997.
4.5 Historic WhoIs data for the Domain Names records them having been registered in the following names at the following times:
:
- May 3, 2007 SUNAPTIX
- November 2, 2008 Shelli Damon
- January 19, 2009 Omar Saleem, A1 Passport & Visa
- March 16, 2010 Enough Host LLC
- May 2, 2007 SUNAPTIX
- August 6, 2008 Shelli Damon
- December 17, 2009 Omar Saleem, A1 Passport & Visa
- February 9, 2010 A1 Passport & Visa
- March 23, 2010 Enough Host LLC
4.6 As at the date of the Complaint the Domain Names each resolved to a web page that contained the following text:
“This site is newly owned by Price Point and is for sale
If you are interested in purchasing this site send us an email …”
4.7 These web pages continue to operate as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 In broad terms the Complainant contends that the Domain Name is identical to its registered trade marks and the Domain Name is confusingly similar to its registered trade marks.
5.2 The Complainant also maintains that the Respondent has no legitimate interest in the Domain Names. It states that the Respondent has not been authorised to use the Al Rajhi name. It refers to the offers for sale on the web pages operating from the Domain Name and claims that this does not involve the use of the Domain Name in connection with any bona fide offering of goods or services. It also maintains that the Respondent has never been commonly known by this term.
5.3 So far as bad faith is concerned, the Complainant maintains that the historic WhoIs data for the Domain Name suggest that they only were registered in the name of the current registrant in March 2010. The recent offers for sale are said to suggest that the Respondent registered the Domain Names for the purpose of selling them to the Complainant. The Complainant contends that the fact that the Complainant's trade mark registrations pre-date the March 2010 registrations points to bad faith, relying upon paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Lastly, the Complainant contends that the Domain Names are “so obviously connected” with the Complainant that this suggests “opportunistic bad faith”.
5.4 In support of the propositions put forward the Complainant relies upon a large number of cases previously decided under the UDRP. B. Respondent
5.5 The Response takes the form of the Center's “Online Response Filing Form” to which only one substantial paragraph has been added. It is therefore convenient simply to reproduce that paragraph in full. It reads as follows:
“INFOCOM Corporation, which was owned by Elashi Family, registered these 2 domains in the 90's. INFOCOM did a lot of business with Alrajhi bank and offered to sell the domain to Alrajhi bank and they were told at the time that the bank was NOT interested in this domain and they rather to keep .sa. Since then, INFOCOM was shut down and their assets where acquired by Synaptix Corporation in 2002, however to another Elashi family member. This family has gone thru a lot and (Ziad Alramahi & Tarek El-Kadri) decided to purchase these 2 domains to help the family financially. We had no intention of infringing on Alrajhi Bank trademarks or act in bad faith concerning these domains. Since then, these 2 domains where set for sale so we can recover our original costs. The complainant submitted some evidence to show that A is a trademark in their complaint; however, we fail to see how is a trademark. At any rate, we are more than willing to settle this issue with these 2 domains out of court to recover our original costs.” 6. Discussion and Findings
6.1 The Complainant must make out his case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
6.2 This aspect of the case can be dealt with relatively quickly. In the absence of any evidence before it to the contrary, the Panel accepts that the Domain Names can only be sensible read as the terms “al rajhi” and “al rajhi bank” with spaces removed and combined with the “.com” TLD. The Panel also accepts that the Complainant is the owner of at least one registered trade mark for the words AL RAJHI BANK.
6.3 In the circumstances, the Panel concludes that the domain name is virtually identical to a mark in which the Complainant has rights. In the case of the Domain Name, the absence of the ordinary word “bank” does not make a significant difference. The term “al rajhi” remains and this is more than sufficient to justify a finding of “confusing similarity” as that phrase is understood under the Policy.
6.4 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.5 The Complainant goes through each of the examples of rights or legitimate interests identified in the Policy and asserts that these do not apply in this case. It also confirms that it has not authorised the Respondent to use the terms “AL RAJHI BANK” and “AL RAJHI”. There are various cases under the Policy that suggest in such circumstances the burden of proof in respect of this issue passes to the Respondent.
6.6 However, in this case it is possible to consider the issue of rights and legitimate interests more directly. For reasons that are explained in greater detail under the heading of bad faith below, the Panel accepts the Complainant's contention that the Domain Names were acquired and are being held to gain some financial advantage (most probably through sale) from the fact that if placed in the hands of another they might be used misleadingly to divert consumers to a website unconnected with the Complainant.
6.7 Such activity and holding does not provide a right or legitimate interest within the meaning of the Policy.
6.8 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 The Complainant must show that the Domain Names were both registered and used in bad faith. The Complainant contends that the appropriate date upon which to assess bad faith registration is not the date upon which the Domain Names were created but March 2010, at which time it is said the Domain Names were registered in the name of the current Respondent.
6.10 In broad terms the Panel agrees (see, for example, the analysis to be found in this respect in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J.,WIPO Case No. D2009-0785). The exact dates that the Domain Names became registered in the name of the present registrant is not clear. However, it must have happened by at least the dates in March 2010 when historic WhoIs data for the Domain Names records them to have been registered in the name of the Respondent. As at February 9, 2010 the Domain Name was registered in the name of A1 Passport & Visa, and although there is no evidence of any corresponding entry for the Domain Name at that time, both Domain Names through out their history appear to have been dealt with together. It therefore seems probable that both Domain Names were registered in the name of the Respondent at some point between mid February 2010 and early March 2010.
6.11 That said, the exact dates of registration probably do not matter in this case. The reason is that a relatively detailed explanation has been given both in the Response and in emails forwarded to the Center in the course of proceedings as to who actually controls the Domain Names, and for what purpose they were acquired. In particular, it seems clear that the original registrant of the Domain Names acquired them because they embodied the name of the Complainant's business. Indeed, it would appear that the Respondent even claims that at one stage the Domain Names were offered for sale to the Complainant. From the Response and the emails it also seems reasonably clear that the Domain Names were acquired by the present “owners” with knowledge of their association with the Complainant.
6.12 The Respondent contends that the Domain Names were purchased to help out the previous owners financially. Whether that was so, the Panel cannot say. However, there seems little doubt that whatever the exact motives of the purchaser or purchasers, their intention was always to try and recoup and make a profit over and above the costs of purchase by means of a further sale. Not only have the Domain Names been advertised for sale on the Internet, but according to Mr Alramahi they have been “up for sale for years”. Mr Alramahi also contended that they were “purchased as an investment”.
6.13 Then there is the telling fact that the Respondent when asked what were the original costs that it wished to recoup, responded that it was USD 50,000. Whether this actually represents the true sum actually paid for the Domain Names, again the Panel cannot say. However, the significance of this figure is that it appears to the Panel that the only credible reason why the Domain Names might command such a value is because of their association with the Complainant and the fact that they might be used in a way that took advantage of the reputation of the Complainant's name (see comments at para 6.20 of the three person panel in Hydentra, LP. v. Xedoc Holding SA,WIPO Case No. D2008-0454).
6.14 In short the Panel has little difficulty in concluding that the Domain Names were registered (whether the date of “registration” be in March 2010 or earlier) and were held with a view to taking unfair advantage of the reputation in the Complainant's marks. That is registration and use in bad faith.
6.15 The Panel would also add that this appears to be activity that may well fall within the scope of paragraph 4(b)(i) of the Policy. That gives as an example of bad faith:
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
6.16 The Panel is unconvinced that the term “out-of-pocket costs” as referred to in that paragraph extend to the costs of acquisition, where the high price of acquisition can only be explained by reference to the value of another's mark. In any event, these costs have certainly not been “documented” by the Respondent. However there is no need, and the Panel declines, to decide this case on such a narrow ground.
6.17 In coming to its conclusion in this case, there are certain aspects of the Complainant's argument that the Panel has not found persuasive. For example, at one point the Complainant states that one indication of bad faith is that the Complainant's trade mark pre-dates the Respondent's registration of the Domain Names, citing paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Paragraph 3.4 deals with the issue of constructive notice, and this Panel would suggest that it is a concept that is now of limited value under the UDRP2. That is not to say that the date of registration of a mark can always be ignored. It may perhaps be a factor that a Panel may take into account when it comes to assessing a registrant's actual knowledge at the date of registration. But in this case the Panel has already concluded that the Respondent has knowledge of the Complainant not only at the time of the “registration” of the Domain Names in early 2010, but most probably earlier.
6.18 However, this makes no difference to the overall conclusion in this case. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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 names, and be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: June 24, 2010
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