Complainant is Maher Mohammad Najib Mikati of Beirut, Lebanon, represented by Nasser and Associates, Lebanon.
Respondents are Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States of America / Kaleb Jacob Mikati, Mikati Associates of Beirut, Lebanon. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2014. On November 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2014, 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 Complainant on November 11, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 14, 2014.
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 Respondent of the Complaint, and the proceedings commenced on November 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 9, 2014.
The Center appointed David Perkins as the sole panelist in this matter on December 16, 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 4.A Complainant
4.A.1 Complainant is a member of the Mikati family, which is prominent and well known in Lebanon, throughout the Middle East and internationally. That family originated from Tripoli, the capital city of North Lebanon. Complainant’s father, Najib Mikati, is a former Prime Minister of Lebanon and both he and Complainant’s uncle, Taha Mikati, are very successful businessmen. Together, they were ranked by Forbes Magazine in March 2014 as the richest billionaires in Lebanon. A Forbes Magazine article of March 2011 describes the Mikati family businesses from their beginnings in the 1970s in the construction sector, to the listing in 2005 of their telecoms company Investcom on the London and Dubai Stock Exchanges with a market capitalisation of USD 3.3billion making it one of the largest companies in the Middle East. Investcom employed more than 5,000 people with a presence in 12 countries across 3 continents. In June 2006 Investcom was acquired by the South African telecoms company, MTN, for USD 5.5 billion.
4.A.2 Complainant asserts that he has common law trade mark rights in the Mikati name based on its use in trade and commerce in Lebanon and internationally. 4.B Respondents
4.B.1 The disputed domain name was created on May 27, 2014. The First Respondent Domain Privacy Service FBO Registrant is a privacy service. After the Center sent a request to the Registrar for registrar verification in connection with the disputed domain name, the Registrar disclosed the underlying registrant Kaleb Jacob Mikati, who is named as the Second Respondent in the amended Complaint.
4.B.2 In the absence of a formal Response, all that is known of the Second Respondent appears from the amended Complaint and the exhibits to the amended Complaint. As will be explained below, Complainant believes that the Second Respondent is a fictitious person and that the website to which the disputed domain name resolves was created and has been used as a fraudulent sham to attract business by attempting to trade off the well-known Mikati family name. 5. Parties’ Contentions 5.A Complainant 5.A.1 Identical or Confusingly Similar
5.A.1.1 As noted above, Complainant asserts that he has common law trademark rights in the Mikati name. He asserts such rights by virtue of being a member of the Mikati family. Following the business activities described in paragraph 4.A.1 above, which were started some 40 years ago, since 2007 the family’s business interests have been centered on the M1 Group of companies. That group is active in a number of business sectors including telecoms, real estate, aviation, fashion, energy and heavy industry.
5.A.1.2 Exhibited to the amended Complaint are Internet searches on Complainant personally and on “Mikati”, “Mikati Group” and “Mikati Family” and Complainant’s LinkedIn Account. From these it appears that Complainant has held and continues to hold the following business positions: Chairman and Chief Executive of M1 Travel; Chief Executive Officer of M1 Fashion; Board Member of the French fashion brand, Façonnable; Chief Executive Officer of M1 New Ventures; Executive Director of M1 Group; Member of the Board of Directors of Royal Jordanian Airline; Board Member of GrowthGate Capital Corporation, a growth investment firm; Director of Investcom Holding SAL; Director of M&M SAL Holding; and from 2003-2006 Managing Director of Areeba Ltd., the first private mobile telecoms operator in Cyprus.
5.A.1.3 Complainant’s case is that, in view of the fame of his family name (Mikati), and the fact that he and members of his family are well-known businessmen in various sectors and industries, he has an obvious interest in protecting the family name from commercial use by others. In that respect, Complainant cites the decisions in Philip Berber v. Karl Flanagan and KP Enterprises,WIPO Case No. D2000-0661 and Steven Rattner v. BuyThisDomainName (John Pepin),WIPO Case No. D2000-0402. In the first case, the decision records that Philip Berber received worldwide publicity when he sold his online trading brokerage firm to Charles Schwab for USD 488 million. The panel held that he had common law rights in his name on the basis that, were a third party to set up an electronic trading firm under his name, he would have rights to prevent that in passing off. In the second case, the panel found that the complainant, Steven Rattner, had common law rights in his name because he provided investment and banking services under his own name.
5.A.1.4 Complainant also bases his assertion that he has common law trademark rights in the Mikati name by reference to public recognition of that name. In that respect, exhibited to the amended Complaint are email exchanges by one, Natan Truman Mansell, on behalf of Mikati Associates, with four third parties. In October, 2014 Mr. Mansell - who Complainant believes is a fictitious person - operating from the website “www.” introduced Mikati Associates as “Mikati is billionaire from Lebanon” and invited business dealings with StarBow, a travel and tour operator; SARL Distilleries Rullier et Fils, cognac producers of Sonnac, France; Jacinto Vidarte, Press Officer of a Spanish cycling team; and the Swedish Company Sachajuan Haircare AB. Each of those entities questioned whether Mr. Mansell/ Mikati Associates were connected to the M1 Group or the Mikati family and referred the email exchanges to the M1 Group.
5.A.1.5 Complainant asserts that, because the disputed domain name incorporates the “Mikati” name in its entirety, it is confusingly similar to the Mikati name. Rather than avoid confusing similarity, Complainant says that addition of “associates” reinforces confusion as is evidenced by the above referred to emails. 5.A.2 Rights or Legitimate Interests
5.A.2.1 Complainant’s case is that there is no evidence that Respondents, specifically the Second Respondent, can demonstrate rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
5.A.2.2 The amended Complaint exhibits two Reports by the investigation agency, Khalil Masri et Fils (Masri). These Reports evidence that the Second Respondent is a fictitious name; that the address of the Second Respondent given in the WhoIs database, which is the same address for Mikati Associates in Beirut given on its website and in Mr. Mansell’s emails, houses the Hard Rock Cafe and the Bay View Hotel and bears no reference to Mikati Associates; and that the telephone numbers given on the website and the emails do not exist. The Reports also establish that the various claims made on the Mikati Associates website are untrue. For example, that it is based in Beirut, employs some 2,500 people, is ranked as “the largest and best performing hedge manager in the world”, and that“Today, everyone at Mikati Associates is committed to perpetrating the Mikati family values and heritage...”
5.A.2.3 Further, a search on the U.S. Securities and Exchange Commission website revealed no entity known as Mikati Associates. The Mikati Associates website identifies nine officers, including Mr. Mansell and one, Nasser Mikati, as Chairman and General Manager. However, Google and LinkedIn searches against each such name produced either no recognition, or connections to entirely different entities than Mikati Associates. For example, one was to a Dr. Ludovico Grimaldi of CVA Commercial and another to Mr. Fadi Sabbagha, who responded on LinkedIn that he has no connection with Mikati Associates.
5.A.2.4 From the foregoing Complainant concludes that Mikati Associates, as portrayed at the website to which the disputed domain name resolves, is a sham organisation designed to defraud potential investors and traders into believing that it is part of the M1 Group and/or part of Complainant’s family. Further, that the name of the Second Respondent is fictitious. In the circumstances, Complainant says that Respondents cannot have rights or legitimate interests in the disputed domain name, since they cannot demonstrate that any of the circumstances in paragraph 4(c) of the Policy apply. 5.A.3 Registered and Used in Bad Faith
5.A.3.1 As against the First Respondent, Complainant relies on a “pattern of conduct” (paragraph 4(b)(ii) of the Policy) based on a search of the UDRP cases database. That search revealed that First Respondent has been named as a respondent in eight earlier cases under the Policy. In all but one of such cases the disputed domain name was transferred to the complainant, the exception being a majority decision with a dissenting opinion.
5.A.3.2 As against the Second Respondent, Complainant’s case is that the facts summarised under paragraph 5.A.2 relating to that Respondent personally and to the Mikati Associates website to which the disputed domain name resolves demonstrate bad faith under paragraph 4(b)(iv) of the Policy. 5.B Respondents
As already noted, no formal Response has been provided by either the First or Second Respondent. After the Center notified Respondent’s default on December 9, 2014, an email communication was received by the Center from the Second Respondent on December 10, 2014, in which the Second Respondent asked “what you need to keep same domain? new passport to register?” No further email communication was received from either of the Respondents. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name 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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 It is clear to the Panel that the disputed domain name is confusingly similar to the Mikati name for the reasons advanced by Complainant, which are summarised in paragraph 5.A.1 above. The question is whether Complainant can establish common law trade mark rights in the Mikati name.
6.6 This raises two points. First, can a complainant show UDRP-relevant rights in a personal name? The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses this in paragraph 1.6 in the following terms:
“Consensus view: ....While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trade mark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trade mark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required (see also paragraph 1.7 below). A trade mark- equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.”
6.7 The second point follows, namely what needs to be shown for the complainant successfully to assert common law or unregistered trade mark rights? This is addressed in paragraph 1.7 of the WIPO Overview 2.0 in the following terms:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services ... However, 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.”
The WIPO Overview 2.0 also states that where the common law or unregistered trade marks are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.
6.8 In the first of the two cases cited in paragraph 5.A.1.3 above, the panel found that use of Mr. Berber’s personal name in the disputed domain name could amount to passing-off if used by a third party for electronic trading, which was the business Mr. Berber had built up using his own name and sold to Charles Schwab. In the second case, Mr. Rattner’s personal name had become well known through the investment banking and corporate advisory services which he had provided under his own name. By contrast, in this case Complainant is a second generation executive of and shareholder in the businesses established by his father and uncle, first as Investcom and more recently as the M1 Group. In the evidence provided in the amended Complaint and its exhibits there is ample evidence that those businesses were and are strongly associated with the Makati family. The Panel could, however, find only one reference to the “Mikati Group”, which was in the Daily Star newspaper in December, 2013.
6.9 Notwithstanding, the Panel is satisfied that the Mikati family name is well known internationally for its extensive business interests in Lebanon, the Middle East and elsewhere. The third party recognition of that is demonstrated by the emails summarised in paragraph 5.A.1.4 above. Additionally, still further evidence of the well-known reputation of the Mikati name is illustrated by the Second Respondent’s reliance in the website to which the disputed domain name resolves on that well-known status in its attempt to attract business by fraudulently misrepresenting Mikati Associates as part of, or related to, the Mikati family.
6.10 The question then remains as to whether the Complainant himself can claim those rights. In that context the decision in Samih Sawiris v. Domain Privacy Service FBO Registrant / Palm Construction Co., Ltd., John Kurt Meerveld,WIPO Case No. D2014-0923 is particularly in point. In that case the disputed domain name was . The complainant, Sawiris, operated in Egypt in the tourism, hospitality, construction, telecoms and media sectors through the Orascom Group. The companies in that Group were for the most part owned by the complainant and his brothers and were managed by them. The complainant based his case on two grounds, first, that he conducted business transactions under his own name. The panel found insufficient evidence of that. Second, the Orascom group companies were clearly linked by the public to the Sawiris family name, which name was well-known in Egypt and internationally.
6.11 Finding that complainant had rights in the Sawiris name for the purposes of paragraph 4(a)(i) of the Policy, the panel said:
“...there is little doubt that the Complainant has an extensive reputation and that Complainant’s business is closely associated with him personally. And, while the evidence did not strongly suggest that the Complainant deliberately uses his name as an identifier of his business, this does not mean it is not treated as such by the general public. This is particularly reinforced by evidence of actual confusion provided in the Complaint, by an Internet user who mistakenly believed that the Respondent’s website was associated with the Complainant’s business. It is also reinforced by the significant extent and scale of the business with which the Complainant is directly associated.”
6.12 The Panel finds a close similarity between the facts of that case and the reasons for that decision with the facts of the present case. In this case, there is no evidence of actual Internet user confusion. However, here the likelihood of confusion was averted by public knowledge of the well-known business of Complainant and his family under the Mikati name. The Panel endorses the reasoning adopted by the panel in the Samih Sawiris case and, in all the circumstances, finds that Complainant does have common law or unregistered trade mark rights in the Mikati name. Consequently, following the Panel’s finding in paragraph 6.5 above, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.13 For the reasons advanced by Complainant summarised in paragraph 5.A.2 above, the Panel holds that neither Respondent has any rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith
6.14 Again, on the basis of the facts recited in paragraphs 5.A.2 and 5.A.3 above, the Panel has no hesitation in finding registration and use in bad faith as asserted in the Complaint. It is not necessary to reiterate those facts here, they are fully set out in those paragraphs. 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 Complainant.
David Perkins
Sole Panelist
Date: December 22, 2014
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