The Complainant is Olayan Investments Company of Furstentum, Liechtenstein, represented by Shearman & Sterling LLP, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).
The Respondent is Janice Carver of Sevierville, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R S.p.A. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2011. On September 23, 2011, the Center transmitted by email to R S.p.A. a request for registrar verification in connection with the disputed domain name. On September 26, 2011, R S.p.A. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 September 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2011.
The Center appointed Mary Padbury as the sole panelist in this matter on October 31, 2011. 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
The disputed domain name was registered on August 26, 2011. It is important to note that the first digit of the disputed domain name is the number zero “0”, and not the letter "O".
The Complainant is the parent company of the Olayan Group of companies, a Saudi Arabian-based multinational enterprise founded in 1947 by its first Chairman, Suliman Saleh Olayan, comprising approximately 50 companies and affiliated entities worldwide, which are engaged in a range of distribution, manufacturing, services and investment activities.
The Complainant is the owner of several trademark registrations for OLAYAN, including the following:
United Kingdom Trademark Registration No. 2402456 for OLAYAN (word mark), filed on
September 26, 2005, in classes 35 and 39;
United Kingdom Trademark Registration No. 2402431 for OLAYAN (figurative mark), filed on
September 26, 2005, in classes 35 and 39;
Community Trademark Registration No. 4653151 for OLAYAN (word mark), filed on
September 26, 2005, in classes 35 and 39;
Community Trademark Registration No. 8208423 for OLAYAN (word mark), filed on April 8, 2009 in class 36;
Community Trademark Registration No. 4659215 for OLAYAN (figurative mark), filed on
September 26, 2005, in class 35;
Community Trademark Registration No. 8208456 for OLAYAN (figurative mark), filed on April 8, 2009 in classes 36 and 39.
Community Trademark Registration No. 46599223 for OLAYAN (figurative mark), filed on September 26, 2005, in class 35
The Complainant is also the owner of the domain name , registered on March 6, 1996.
The disputed domain name was registered on August 26, 2011. It does not redirect to an active website. 5. Parties’ Contentions A. Complainant
The Complainant is the registered proprietor of a large portfolio of trademark registrations for OLAYAN, both as a plain word mark and in a stylised form, worldwide some of which are detailed above.
The Complainant informs the Panel that the Complainant's employees have email addresses which end with .
The Complainant contends that the disputed domain name is confusingly similar to the trademark and the domain name in which the Complainant has rights as it substantially reproduces the trademark OLAYAN.
With reference to whether the Respondent has any rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant highlights that it has not authorized the registration or use of the disputed domain name by the Respondent and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed domain name has been registered and is being used in bad faith as part of a concerted attempt to deceive for commercial gain Internet users into paying sums of money to the dishonest person who uses the disputed domain name as part of their email address, in order to mislead such Internet users into believing that they are dealing with the Complainant or other members of the Complainant's group. On September 6, 2011 it came to the Complainant's attention that someone had been using an email address incorporating the disputed domain name to send emails representing himself as a director of the Complainant's group in order to entice innocent people into advancing sums of money believing they were dealing with the Complainant's group. The Complainant believes that this is the same person who was responsible for the activities addressed in the complaint considered in Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128 and notes that the text of the email in this complaint is the same as the text in one of the emails complained of in Olayan Investments Company v. Richard Arteaga and Christine Cochrum,WIPO Case No. D2011-1342. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and Supplemental Rules. The complainant has the onus of proving three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel notes that the Complainant has provided evidence of its ownership of several trademark registrations for OLAYAN.
The Panel finds that the disputed domain name is confusingly similar to the registered trademark OLAYAN owned by the Complainant, since the substitution of the number zero "0" for the letter "O" is not sufficient to exclude confusingly similarity.
The Panel is in line with the previous panels on the subject of confusing similarity of a domain name which contains a common or obvious misspelling of a trademark, i.e., typosquatting (see paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
Since the misspelled trademark OLAYAN remains the dominant or principal component of the disputed domain name , this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel must decide whether the Respondent has any rights or legitimate interests to the disputed domain name. In doing so, regard may be had to circumstances which might demonstrate as follows:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name. The disputed domain name has not been used in connection with an active website. The Complainant has attached to the Complaint copies of fraudulent emails apparently sent by the Respondent or other persons in control of the disputed domain name. According to this evidence, the Respondent and/or such persons misrepresented themselves as "Khaled Olayan", the real chairman of the Olayan Group. Such use of the disputed domain name, in the Panel’s opinion, cannot be evidence of any rights or legitimate interests. The use of the disputed domain name appears to have been fraudulent.
Therefore, the Panel concludes that the second element of the Policy, paragraph 4(a)(ii), is satisfied. C. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that the respondent has registered the domain name primarily for the purpose for 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 for valuable consideration in excess of the respondent's out-of-pocket costs directly related to the domain name;
(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in the pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
It is the Panel’s view that it is likely that the Respondent has registered the disputed domain name primarily as part of a concerted attempt to deceive for commercial gain Internet users into paying sums of money to the dishonest person who uses the disputed domain name as part of their email address, in order to mislead such Internet users into believing that they are dealing with the Complainant or other members of the Complainant's Group.
The Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Mary Padbury
Sole Panelist
Dated: December 13, 2011
Full & Egal Universal Law Academy