The Complainant is The Law Firm Dr. Khalid Alnowaiser of Jeddah, Saudi Arabia, self-represented.
The Respondent is andrewsmith of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2013. On October 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 14, 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 October 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 15, 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 is a law firm established in 1996, with offices in Riyadh and Jeddah, Saudi Arabia. The Complainant offers a range of legal services to local and international clients, in both Arabic and English.
The Complainant does not claim a registered trademark right. According to the Complaint, the Complainant has been “known in the market” since 1996 by the initials “LFKAN”: “LF” for “Law Firm”, “K” for “Khalid”, and “N” for “Nowaiser”, eliding the prefix “AL” (the definite article “the” in Arabic) because it so commonly appears at the beginning of surnames in Saudi Arabia. (The Complaint does not explain why the letter “A” is used nonetheless in the abbreviation.)
The Complainant asserts, with support from DomainTools screen shots of historical WhoIs records, that the Complainant registered and used the Domain Name from November 2000 until July 2013 for its firm website and email addresses. In July 2013, however, the registration of the Domain Name was updated, apparently by Mr. S. Faraz, who was the Complainant’s employee responsible for information technology and whose firm email address was formerly listed in the administrative and technical contact details for the Domain Name. According to the Complaint, the firm had recently terminated Mr. Faraz for unrelated reasons. Mr. Faraz refused to furnish the password used to administer the Domain Name registration, and he changed the name servers so that the firm’s website was no longer displayed and its email addresses were deactivated. At the time of this Decision, the Domain Name resolves to a version of the Complainant’s website that appears not to display information dated more recently than 2012.
The current registration details for the Domain Name show the registering organization as “andrewsmith”, which does not appear to be a registered legal entity in the United Kingdom or in Saudi Arabia. The administrative and technical contact person is listed as “andrew smith”, with a Google Gmail address. (The Complaint attaches a message from Gmail regarding the creation of this particular Gmail account, which was found on the firm laptop used by Mr. Faraz). The updated postal address in the WhoIs database shows London as the registrant’s city and lists a London postal code. However, Guam is shown as the state or province, and Guam, of course, is a territory of the United States of America. The telephone number given for the administrative and technical contact is actually the Complainant’s telephone number in Saudi Arabia. On the face of it, then, the registration data are inaccurate and misleading.
The Respondent has not replied to the Center’s attempted email and postal communications notifying the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Domain Name, which it created and used for thirteen years, is identical to its unregistered LFKAN mark. The Complainant asserts that the Respondent, apparently a fictitious name used by a disgruntled former employee, Mr. Faraz, has no rights or legitimate interests in the Domain Name.
The Complainant cites UDRP decisions for the proposition that the materially changed registration details should be viewed as a new registration of the Domain Name. The Complainant contends that the Domain Name was registered and is being used in bad faith in an effort to disrupt the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Policy does not require a registered mark right, but a complainant relying on a common law or unregistered mark right must demonstrate that the mark has acquired secondary meaning:
“Consensus view: The complainant must show that the name 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. [...] a conclusory allegation of common law or unregistered 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.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.)
The Complainant has simply not furnished such evidence in this proceeding. The Complainant only asserts that it has been “known in the market” by the initials “LFKAN” since 1996. However, the evidence in the record concerns only the use of those initials in the Domain Name itself. The media articles linked in the Complaint show that Dr. Alnowaiser has an admirable reputation as a lawyer and commentator, but they do not appear to refer to his professional affiliation with a law firm known as “LFKAN”. Instead, the Complainant relies on the fact that many of the published articles and interviews displayed Dr. Alnowaiser’s email address, which used the Domain Name. An email address is not sufficient to establish a trademark, or the basis for the filing of a UDRP action. There is no evidence in the record, for example, showing that the initials “LFKAN” are used on the firm’s stationery, advertising, or business cards. It is telling that even the Complainant’s website does not prominently display the initials “LFKAN”. Instead, it is headed “The Law Firm of Dr. Khalid Alnowaiser & Partners”.
The Complainant must establish that the Domain Name is identical or confusingly similar to “a trademark or service mark in which the complainant has rights”. The Complainant does not establish that unregistered trademarks are recognized under common law or otherwise in Saudi Arabia, or that the Complainant’s initials are otherwise legally protected in any jurisdiction. Even if such protection were theoretically available, the Complainant has not demonstrated on this record that the initials “LFKAN” have acquired secondary meaning as a distinctive identifier of the Complainant or its goods or services in any geographic market.
The Panel concludes that the first element of the Complaint has not been established. B. Rights or Legitimate Interests
The record does not indicate that the Respondent has rights or legitimate interests in the Domain Name. However, in light of the Panel’s conclusion on the first element of the Complaint, it is not necessary to rule on this element. C. Registered and Used in Bad Faith
The record suggests bad faith on the part of a disaffected former employee of the Complainant, who seems to have hijacked the Domain Name and thereby caused injury to the Complainant’s business. The Complainant may be able to pursue other legal remedies for this conduct, but the UDRP offers no remedy without establishing rights in a relevant mark, which the Complainant has failed to do. 7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: November 29, 2013
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