The Complainant is Al Tamimi & Company of Dubai, United Arab Emirates, represented internally.
The Respondent is Nicole Huisman of Holland, Michigan, United States of America (the “USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with Inic GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2014. On May 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 22, 2014.
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 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2014.
The Center appointed Fleur Hinton as the sole panelist in this matter on June 25, 2014. 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 large commercial law firm with offices in Dubai, Abu Dhabi, Ras Al Khaimah, Sharjah, Saudi Arabia, Oman, Iraq, Qatar and Jordan. It is one of the biggest non-affiliated law firm in the region. It advises governments, corporations and financial institutions as well as smaller businesses and individuals. It has been in business for 25 years and was started by the senior partner, Mr. E. Al Tamimi. It employs 270 lawyers and is very well known and has received awards and accolades including IFLR Middle East Awards 2013, Managing Partner of the Year Award, Managing Intellectual Property Award, UAE Law Firm of the Year and Iraq Law Firm of the Year, to name a few.
The Complainant or its affiliates has registered or applied for the trademark AL TAMIMI & COMPANY in many countries predominantly in classes 16, 35, 38, 41, 42 and 45. It also receives a lot of press coverage and its lawyers regularly contribute articles and interviews to professional publications both in the region and internationally. In addition, its lawyers give radio interviews and appear on television.
The Complainant’s website bears the domain name and is a source of information and contact for clients and potential clients.
The disputed domain name was registered on September 2, 2013 and the Complainant became aware of it sometime in November 2013. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its AL TAMIMI & COMPANY trademark. It argues that the disputed domain name uses the distinctive component of the Complainant’s trademark with the mere addition of “chambers” and submits that the addition of that word cannot be seen as sufficient to distinguish the disputed domain name from that of the Complainant because “chambers” is a word frequently used in connection with the practice of law either to designate law offices or to designate the sort of court hearing where only the judge and counsel are present. It may also indicate in jurisdictions with a split profession the offices of barristers.
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has no connection with the Complainant and is not authorized by the Complainant to use its name. The Respondent is not known by that name. Nor is the Respondent using it for a noncommercial purpose. The Complainant alleges that the Respondent is, on the contrary, using the disputed domain name to run a financial scam by defrauding Internet users who visited the website at the disputed domain name in the mistaken belief that it was the website of the Complainant.
The Complainant further submits that the Respondent has registered and is using the disputed domain name in bad faith. First, it says, the Respondent could not have any bona fide reason for registering a domain name which comprises the name of so well-known a law firm together with the word “chambers”, commonly recognized as being indicative of law offices or other offices having a connection with the law when it is not itself a law office. It also provides evidence of the way in which a scam was run on members of the public. There is a series of emails between a Mr. T. K. Badran to an innocent person who visited the website at the disputed domain name, Ms. L. Robbins. Mr. Badran posed as Mr. H. Hourani, the well-known managing partner of the Complainant and the details provided to Ms. Robbins in the email correspondence are correct except for the phone number and email address at which Ms. Robbins contacted Mr. Badran. The Complainant alleges that, as it is inconceivable that Mr. Badran could be unaware of the Complainant, this is a case of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy requires that the Panel make its finding on the basis 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;
(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. A. Identical or Confusingly Similar
The common element between the Complainant’s trademark and the disputed domain name is “Al Tamimi”, which is the substantive part of the Complainant’s trademark. There is very substantial evidence of the extensive use and reputation of the Complainant both within its region and internationally. The descriptive term “chambers” in the disputed domain name can be discounted as being non-distinctive. The distinctive part of the disputed domain name is the word “altamimi”. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent has not lodged a response and, therefore, the Panel is entitled to take that into account when making its decision. There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is not the Respondent’s own name. The Respondent is clearly not authorized to use it and is not using it for any noncommercial purpose.
In The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064, the panel found that: “To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a “bona fide” offering of goods or services. In some circumstances, a website advertising and selling financial magazines or financial products and services may constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not “bona fide” within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s well known trademark and its domain name; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or its websites or their content; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its websites. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name for its websites.
The Panel finds that the Respondent has provided no explanation for his conduct and that the Complainant has made out a prima facie case. Once the Complainant has made out a prima facie case in this regard, the Respondent has the onus of demonstrating that it does have rights or legitimate interests in the disputed domain name. The Respondent has not lodged any response to this Complaint and therefore, has not shown that it has any rights or legitimate interests. Therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The onus is on the Complainant to establish that the disputed domain name was registered and is being used in bad faith. The Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in the disputed domain name and that it has declined to take part in these proceedings. The Complainant has argued that the Respondent has registered the disputed domain name in bad faith because it could have had no bona fide reason for registering it. The Panel accepts the Complainant’s argument that the Respondent must have had knowledge of the Complainant’s trademark and its reputation at the date at which the Respondent registered the disputed domain name. The Panel finds that the Respondent’s registration of the disputed domain name was in bad faith.
The use in bad faith of the disputed domain name by the Respondent is proven by the posing of Mr. Badran as Mr. H. Hourani, the highly respected managing partner of the Complainant. He has corresponded with potential clients by introducing himself as Mr. T. K. Badran of the Commercial Bank of Dubai and informing them that they are the beneficiaries of a deceased estate. He tells them that, in order to inherit they need to provide their bank details and liaise with an attorney called Mr. H. Hourani, the managing partner of Al Tamimi & Company (Advocates and Legal Consultants). The address of the firm is correct; the only incorrect details are the email address, given as “[…]@” and the phone number.
This is clearly use in bad faith of a domain name and the Panel finds that the Respondent is using the domain name in bad faith. 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.
Fleur Hinton
Sole Panelist
Date: July 11, 2014
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