The Complainant is Olayan Investment Company Establishment of Vaduz, Furstentum, Liechtenstein, represented by Shearman & Sterling LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Richard Bar of Lynn, Massachusetts, United States of America / PrivacyP of Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2013. On January 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2013, the Registrar 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 the Complainant on January 15, 2013 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 January 16, 2013.
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 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2013
The Center appointed Adam Taylor as the sole panelist in this matter on February 19, 2013. 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 Complainant, incorporated in Liechtenstein, is the parent company of the Olayan Group, a multinational enterprise founded in 1947 and based in Saudi Arabia. The Olayan Group consists of about 50 companies and affiliated entities worldwide which are engaged in a range of distribution, manufacturing, services and investment activities. The group uses the name “Olayan”.
The Complainant owns a worldwide portfolio of registrations for the word mark OLAYAN, including United Kingdom Trade Mark Registration No. 2402456 and Community Trade Mark Registration No. 4653151, both filed on September 26, 2005 in classes 35 and 39.
The Complainant is also the owner of the domain name registered on March 6, 1996.
The disputed domain name was registered on October 30, 2012.
Thereafter the disputed domain name has apparently resolved to a holding page of the seller of the disputed domain name.
On January 3, 2013, two emails were sent from the email address “[…]@” to third parties, inviting proposals for a business relationship and which purported to be signed by “KhaledOlayan, Director, Olayan Group”. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s name and mark OLAYAN with the addition of “-”. The disputed domain name is therefore identical or confusingly similar to the Complainant's trade mark. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is not aware, having made due enquiry, of the Respondent having been commonly known by the disputed domain name or using a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is not directed to any active website.
The Complainant has no knowledge of the Respondent making a legitimate noncommercial or fair use of the disputed domain name and has not authorised its use or registration by the Respondent. Registered and Used in Bad Faith
The disputed domain name has been used as part of an email address in order to deceive Internet users into advancing sums of money believing that they are dealing with the Complainant or other members of the Complainant’s Group.
The name “Khaled Olayan”, which is being dishonestly used by the Respondent, is in fact the name of the Chairman of the Complainant and its use in this context is also a deliberate attempt to deceive the public into thinking that the disputed domain name and its user are connected with the Complainant when they are not.
The same person who is perpetrating these fraudulent activities was responsible for certain activities which were the subject of six earlier complaints filed with the Center in 2011 and 2012. In each case, the Complainant was successful in that the panel ordered transfer of the domain names to the Complainant.
The emails which have been sent in the current case and which are the subject of this Complaint closely resemble those used in the previous complaints.
The Complainant has posted a message on its website to warn users of its site about the ongoing unlawful use of its name and to seek assistance from persons who have been approached by the users of these bogus email addresses so that they may be traced and prosecuted. A number of potential victims have come forward as a result, including the individuals who have provided the emails relating to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark OLAYAN by virtue of its registered trade marks for that term. Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Here, the disputed domain name consists of the Complainant’s distinctive trade mark together with an additional descriptive term “Saudi”. As indicated in the paragraphs 1.2 and 1.9 of WIPO Overview 2.0, such a term is insufficient to prevent threshold Internet confusion.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant has produced evidence that the disputed domain name has been used for an email address from which scam emails were sent impersonating the Complainant. Although the exact nature of the scheme is not clear, it seems obvious to this Panel that some sort of fraudulent activity is afoot. It is clear from the fact of impersonation that the Respondent must have known of the Complainant’s trade mark at the time he registered the disputed domain name.
Furthermore, the disputed domain name is part of a pattern whereby at least six other domain names comprising variations of the Complainant’s name and mark have been used to send very similar fraudulent emails in the past. Those domain names have all been the subject of bad faith findings in the following UDRP cases: Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128; Olayan Investments Company v. Richard Arteaga and Christine Cochrum,WIPO Case No. D2011-1342; Olayan Investments Company v. Janice Carver,WIPO Case No. D2011-1623; Olayan Investments Company v. Janice Carver, WIPO Case No. D2012-0212; Olayan Investments Company Establishment v. Privacyp and N/A, Ron Barrett, WIPO Case No. D2012-1846; and Olayan Investments Company Establishment v. Namesco Limited d/b/a G / Jeffrey Nicholson WIPO Case No. D2012-1303.
Given the evidence of use of the disputed domain name for a fraudulent purpose, the Panel readily concludes that it was registered and is being used in bad faith by the Respondent.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 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 names be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: March 4, 2013
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