The Complainant is Al Dostor Journal for Press, Publications, Advertisement and Circulation of Giza of Egypt, represented by Talal Abu Ghazalah Legal (TAG-LEGAL), Egypt.
The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States of America and Hany Albeshry (MONIKER3747617) of Nasr City, Cairo, Egypt, represented by Traverse Legal, PLC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2011. On December 19, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On December 19, 2011, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which is differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 26, 2011. 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 the Respondent of the Complaint, and the proceedings commenced on January 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2012. The Response was filed with the Center on January 24, 2012.
The Center appointed Mohamed-Hossam Loutfi as the sole panelist in this matter on February 7, 2012. 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 apparently registered on or about March 8, 2008.
The Complainant is the owner of the domain name since 2008, which holds the Complainant’s online electronic newspaper bearing the name of “Al Dostor”, an Arabic word which means in English language “The Constitution”, and providing the same services in the printed newspaper.
The Respondent has an active website which was apparently posted after termination of the employment contract with Mr. Ibrahim Eissa on October 2010, under the disputed domain name in the same field as the Complainant’s, i.e., the journalism and press field.
Mr. Eissa used to be the Chief Editor of the Complainant’s “Al Dostor” newspaper during the period from March 2005 to October 2010. On September 30, 2011, the Respondent opened an active website under a new name “Al Dostor Al Asly”, which means in English “The original Aldostor”. 5. Parties’ Contentions A. Complainant
The Complainant alleges that pursuant to the common law principles for protecting unregistered trademarks, he showed that the name has become a distinctive identifier associated with the complainant goods and services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.
The Respondent registered the disputed domain name after termination of the employment relationship as to create confusion in the mind of the consumer and to unfairly compete with the Complainant. The only difference is that he added an additional word, i.e. “Al Asly”, which means in English language "the original”. Thus, confusion is occurred with the complainant's mark.
The Complainant demands the transfer of the disputed domain name based on fulfillment of the three required elements pursuant to the Policy, i.e. identical or confusingly use of a distinctive name, lack of legitimate interest from the Respondent on this name and has registered and used the disputed domain name in bad faith. B. Respondents
The Respondents allege that this Complaint must be denied as the dispute is outside of the scope of the Uniform Domain Name Dispute Resolution Policy, which applies only to the abusive registration of domain names not to the termination of an employment relationship.
The Respondents added that the Complainant did not possess trademark rights at the time of registration on the said generic term.
The Respondents argued that the use of the disputed domain name was necessary after the unlawful termination of his employment as to protect the freedom of the press in Egypt, individual liberty, freedom of speech, and a free press, especially as the word “Aldostor” is a generic word. 6. Discussion and Findings A. Scope of the Policy
It is worth noting at the outset that the Panel does not have jurisdiction to decide claims of freedom of speech under applicable national law which fall outside the scope of the Policy. Such causes of action require separate examination by a competent court of law.
The Panel’s jurisdiction is limited to the determination whether the Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy Paragraph 4(a).
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
For purposes of informing the Panel’s assessment of the merits of the present dispute under the Policy, the Panel has taken note of, inter alia, paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), and prior decisions cited therein. The Panel notes, in particular, the “view I” which is summarized in the relevant part therein, in the following terms:
“The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e, ) as that may be understood by Internet users as impersonating the trademark owner.” B. Identical or Confusingly Similar
To succeed in this case in establishing nonregistered trademark rights the Complainant must show that the name relied upon has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the Complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered trademark rights can arise for the purposes of the Policy even when the Complainant is based in a civil law jurisdiction.
However, a conclusory allegation of unregistered trademark rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. See UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575, Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, and Instra Corporation Pty Ltd v. Domain Management SPM, WIPO Case No. D2009-1097.
On the record in this case, the Panel finds that the Complainant has rights in the unregistered trade mark AL DOSTOR as the name has became a distinctive identifier associated with the Complainant’s goods and services in the press field. It is clear that the disputed domain name containing the principal part (“dostor”) of the mark AL DOSTOR in which the Complainant has rights is virtually identical or at least confusingly similar for the purposes of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
If the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, or any other basis for rights or legitimate interests, then the Respondent may lack a legitimate interest in the disputed domain name. See Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016.
The disputed domain name was registered by Mr. Eissa for the Complainant’s account in 2008 during the course of his employment relationship. Though, after the termination of the said relationship, Mr. Eissa has re-registered the domain name for his own account, using the registrant name “Hany Albeshry” after adding the word "Al Asly”, i.e., " Al Dostor Al Asly" on the website to which the disputed domain name resolves. In this Panel’s view he principle of loyalty forbids ex employees from competing with their employer after termination of the employment relationship by registering domain names, registered while in such employment arrangement in the name of the employee, or in other names adopted for the same purpose.
The Panel accepts that the use of a mark with an intention to derive advantage that amounts to be non-legitimate use and does not confer any rights to the Respondent. See DivX, LLC v. PrivacyP / Gerente de Dominia, CSRUS Enterprises,WIPO Case No. D2011-0600 and Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
Accordingly, the Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
Generally, when a domain name is registered by the Respondent before the Complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the Complainant's then non-existent mark. However, in certain situations, when the Respondent is clearly aware of the Complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 , Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320, and San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., WIPO Case No. D2009-1545.
Whereas the disputed domain name is a daily electronic newspaper edited by Mr. Eissa who used to be the Chief Editor of the Complainant’s newspaper from 2005 to 2010. Thus, the Respondent has continued to use the Complainant’s trademark under a domain name registered for the Complainant, and now held under a new name in a bad faith deliberately attempting to confuse the public since he has no longer been the editor of the printed newspaper.
Whether or not the Respondent registered the disputed domain name on behalf of his then-employer Al Dostor, or his own personal capacity while as Chief Editor of the Al Dostor newspaper, the subsequent use and retention of that domain name by the Respondent raises a colourable question as to his bona fides at the time of the initial registration in 2008. On a further note the Panel finds the Respondents’ keeping the disputed domain name after termination of the employment relationship is a sign of bad faith regardless of the nature of the said termination.
The Panel determines that the bad faith of the Respondents is further established because the Complainant’s printed newspaper "Al Dostor" has gained certain fame amongst Egyptian newspapers and the Egyptian public. This fame and reputation have been established through years of efforts by the Complainant and such illegitimate act of the Respondent to register and re-register the disputed domain name under a different name with a new title adopting essentially the same format as the said printed newspaper, i.e., "Al Dostor" after he was fired is a blatant attempt to detract from the Complainant’s fame. See Reveille LLC v. Theodore Lazier / Registrant c/o / Whois Privacy Service,WIPO Case No. D2011-0601.
Therefore, the Panel finds that the Complainant has satisfied the third element of paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Mohamed-Hossam Loutfi
Sole Panelist
Dated: March 2, 2012
Full & Egal Universal Law Academy