Complainant is GFH Capital Limited of Dubai, United Arab Emirates, represented by Norton Rose Fulbright LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is David Haigh of Leeds, United Kingdom, represented by Stephenson Harwood, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Mesh Digital Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2014. On that same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on December 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2015. Following a request from Respondent and communications with the parties (see below, Respondent’s Request for Stay of Proceedings), the due date for the Response was subsequently extended to January 11, 2015. The Response was filed with the Center on January 9, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 20, 2015. 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
Complainant is a financial services company and a wholly owned subsidiary of Gulf Finance House B.S.C., an investment bank with its headquarters in the State of Bahrain (“Bahrain”). Complainant was incorporated as a company in December 2005 as “Injazat Capital Limited”, but then changed its name to “G Capital Limited” on April 28, 2011, and subsequently to “GFH Capital Limited” on July 22, 2012.
Complainant is the owner of a registered European Community Trademark (“CTM”) for GFH CAPITAL, filed on July 20, 2012 and registered on November 29, 2012.
Respondent is a former employee of Complainant, commencing as Legal Counsel in 2008 and subsequently promoted to Deputy General Counsel and then to Deputy CEO, which was the last position he held prior to his resignation on March 11, 2014. Respondent is an British solicitor, registered with the English and Welsh Solicitors Regulation Authority (“SRA”).
The Domain Name was registered by Respondent on February 28, 2011, while he was employed by Complainant. 5. Preliminary Matter: Respondent’s Request for Stay of Proceedings
Prior to filing its Response, Respondent’s legal representative sent a letter dated January 5, 2015 (Respondent’s “January 5th letter”) to Complainant’s legal counsel, with a copy to the Center. The letter provided background concerning on-going litigation between Respondent and Complainant in courts in various jurisdictions, while also addressing certain issues related to the Domain Name and this dispute. Respondent’s legal counsel reported that Respondent had been arrested on May 18, 2014 in Dubai and remains in custody, although he has not been charged with any criminal wrongdoing and is preparing, or has already filed, various countersuits against Complainant. Respondent’s assets are also subject to freezing injunctions issued by the English High Court and the Dubai International Financial Center Courts.
Respondent proposed that, as the Domain Name was currently suspended, there is no urgency to resolve this dispute (and a separate dispute between the parties over a Twitter account) and that this case should stayed and/or suspended until the court proceedings between the parties are resolved. In its Response, Respondent repeated its request that this case be suspended and/or stayed until the other legal proceedings between Complainant and Respondent are resolved. Respondent emphasized its view, as it did in its January 5th letter, that the Complaint in this UDRP case “is merely a side-point to a more substantial dispute” between Complainant and Respondent, which relates to allegations between the parties of, inter alia, financial irregularity, deceit, misconduct, conspiracy, fraud, money laundering and abuse of process, and is the subject of multiple legal proceedings in the United Arab Emirates and the United Kingdom.
On January 7, 2015 Complainant’s legal representative sent a letter (Complainant’s “January 7th letter”) to Respondent’s counsel in reply to Respondent’s January 5th letter, also copying the Center. Complainant stated that Respondent’s January 5th letter raised a number of points that were irrelevant to these UDRP proceedings. While acknowledging that there are pending legal proceedings between the parties in various jurisdictions, Complainant stated that none of those cases involved the Domain Name. Complainant refused to consent to a stay or suspension of this case, arguing that it presents a discrete dispute concerning the Domain Name, which is unconnected to the other disputes between the parties.
Respondent’s January 5th letter and Complainant’s January 7th letter both contain information concerning court proceedings between the parties about matters that are unrelated to the Domain Name, but they also make several points regarding the Domain Name and this dispute. In response to Complainant’s January 7th letter, the Center indicated that under the Rules, no provision is made for Supplemental Filings by either party except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings, such as the January 5th and January 7th letters.
The Panel decides that it will accept and consider the letters received from Respondent and Complainant insofar as they provide information relevant to (i) Respondent’s request that this case be suspended and/or stayed, and (ii) the Domain Name.
Paragraph 10(a) of the Rules provides that the Panel shall “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.” Further, paragraph 18(a) provides that the Panel has discretion to consider whether to suspend or terminate a case, or proceed to a decision, in the event that there are legal proceedings concerning a disputed domain name:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
It appears that serious allegations have been asserted by Complainant against Respondent and equally serious allegations have been made by Respondent against Complainant and its officers in the legal proceedings in the United Kingdom, the United Arab Emirates and elsewhere. However, these legal proceedings do not concern the Domain Name. The Panel does not need to address the charges that the parties have lodged against each other concerning matters unrelated to the Domain Name. While Respondent has characterized this UDRP case as “a side-point to a more substantial dispute” between Complainant and Respondent, the Panel nonetheless has received the parties’ submissions and is in position to decide this case based on the information and evidence that has been provided. Except as to one point addressed immediately below, the issues involving the Domain Name are distinct and can be decided without reference to these other matters.
Respondent’s legal counsel indicated that Respondent has sought reimbursement of expenses incurred in registering and renewing the registration of the Domain Name in legal proceedings before the English High Court. As discussed in the balance of this decision, the Panel does not need to determine whether this claim has merit in order to decide this UDRP case. If Respondent considers that it is owed reimbursement for expenses associated with the Domain Name, these expenses can be pursued in the other legal proceedings and the Panel makes no finding on this point.
The Panel considers that, in accordance with paragraph 10(b) of the Rules, each party has been given a fair opportunity to present its case through the submissions that have been presented in this case. Accordingly, the Panel determines that there is no reason to stay, suspend or terminate this case, and will proceed to render a decision. 6. Parties’ Contentions A. Complainant
Complainant states that it changed its name to GFH Capital Limited so that its corporate brand would be in alignment with its parent company, Gulf Finance House, which has traded as “GFH” since 1999. Complainant claims that it has been recognized as being a part of the GFH group since its incorporation in December 2005. In addition to owning a registered trademark for GFH CAPITAL, Complainant claims that through its trade under the GFH Capital name and brand, it has acquired significant goodwill and recognition in the market as GFH Capital. In addition to the GFH Capital brand, Complainant states that “GFH” is a well-known brand that has acquired goodwill and recognition in the market. Complainant states that its parent company, Gulf Finance House, is the proprietor of several trademarks for GFH.
Complainant states that its GFH Capital branded website was linked to the Domain Name for the past three years and was designed by Complainant’s in-house graphics team. By way of illustration, Complainant makes reference to materials obtained from the Internet archive “Way Back Machine” to show that its website was linked to the Domain Name in July 2012 and as recently as May 17, 2014. On November 18, 2014, Complainant claims that it experienced a loss of email service and subsequently became aware that the Domain Name was being redirected to third party websites, including Respondent’s personal website, the Arabian Business News and Reuter’s websites, the Disney “Muppets” webpage, and the complaints form on the Dubai Financial Services Authority website, among other sites. On becoming aware that its website was being redirected to the third party sites, Complainant contacted the website host, Heart Internet, to report this activity and discovered that the Domain Name was not registered to Complainant, but to Respondent. Heart Internet explained that it did not consider that it was in a position to take any action to suspend or transfer the Domain Name without instructions from Respondent.
Complainant states that during Respondent’s employment with Complainant, Respondent registered the Domain Name in his own personal name rather than in the name of Complainant and gave himself administrative control over the Domain Name. Complainant states that the registration and renewal fees for the Domain Name were paid using Respondent's corporate credit card, meaning that these fees were paid by Complainant. Respondent has submitted a copy of Complainant’s corporate credit card expense report showing payment for renewal of the Domain Name on October 27, 2012. Respondent's employment with Complainant terminated on March 11, 2014.
(i) Identical or confusingly similar
Complainant contends the Domain Name is identical or at least confusingly similar to trademarks in which Complainant has rights. Complainant has a CTM for GFH CAPITAL, registered on November 29, 2012, and contends that it has acquired significant goodwill and recognition in the market through its trade under the GFH CAPITAL name and mark. When the generic Top-Level Domain “.com” is discounted, the Domain Name consists of the letters “gfh-capital”. Complainant submits that the addition of the hyphen between the words “gfh” and “capital” is inconsequential. Complainant’s mark and the Domain Name are virtually identical, which is sufficient for the purposes of the Policy.
For the sake of completeness, Complainant draws the Panel’s attention to the fact that the Domain Name was registered on February 28, 2011 and Complainant registered its GFH CAPITAL trademark on
November 29, 2012. Complainant submits that paragraph 4(a)(i) of the Policy does not require that a trademark be registered prior to the registration of a disputed domain name.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no trademark rights in the “GFH Capital” name and has not been authorized by Complainant to use this name for his own purposes. Until Complainant had contacted the website host, Complainant had believed that the Domain Name was registered in its own name.
Further, Complainant asserts that Respondent is unable to demonstrate any of the circumstances described in 4(c) of the Policy. In particular, Respondent is unable to show that (i) before notice of the dispute, he has used or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; (ii) he has been commonly known by the Domain Name; and (iii) he is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark. The only connection that Respondent has to the GFH Capital name is that he is a former employee of Complainant. Complainant argues that the current use being made by Respondent of the Domain Name falls significantly short of being described as “legitimate”, “noncommercial” or “fair.” Complainant submits that the redirection of the Domain Name to third party websites, which include Respondent’s personal website, the Arabian Business News and Reuter’s websites, the Disney “Muppets” webpage, and the complaints form on the Dubai Financial Services Authority website, among other sites, is designed to tarnish Complainant’s trademark and reputation. Accordingly, Complainant contends that Respondent has no rights or legitimate interests in the Domain Name and satisfies paragraph 4(a)(ii) of the Policy.
(iii) Registered and used in bad faith
Complainant contends that the Domain Name was registered by Respondent and is being used by him in bad faith. Respondent is a former employee of Complainant, having terminated his employment with Complainant on March 11, 2014. During his employment, Respondent paid for the registration and renewals of the Domain Name using his corporate credit card. The Domain Name should have been registered in the name of Complainant, his employer, but it was not. As of November 18, 2014, Complainant experienced a loss of email and subsequently noticed that the Domain Name was being redirected to third party websites. Complainant asserts that this malicious redirection of the Domain Name is continuing and is designed to tarnish Complainant’s trademark and damage its reputation. As such, Respondent is using the Domain Name in bad faith.
In its January 7th letter, Complainant denies that it has ever offered to purchase the Domain Name from Respondent, or that it had any form of agreement with Respondent as alleged in Respondent’s letter of January 5, 2015. Until recently, when Complainant became aware of the allegedly malicious redirection of its website, Complainant states that it was unaware that the Domain Name was registered in Respondent’s name.
Complainant further asserts that the following points as relevant to bad faith. First, the retention of the Domain Name amounts to a breach of duties owed by Respondent to Complainant under his employment contract, which is submitted in evidence. At paragraph 4 of the contract, upon termination Respondent was required to return to Complainant “all reports, client information, files and working papers and any copies of the same and any other property” of Complainant, including proprietary information. Complainant argues that the proprietary right in the Domain Name falls within the scope of this obligation. Therefore, Respondent’s retention of the Domain Name amounts to a breach of this duty.
Secondly, Respondent was initially employed by Complainant as “Legal Counsel”. At the time of preparing this Complaint, Respondent was still registered as a solicitor. As a solicitor employed by Complainant, Respondent was under and continues to have professional obligations to Complainant. Complainant urges that Respondent’s wrongful retention of the Domain Name, and the allegedly abusive activity which he is now undertaking, amounts to a breach of those obligations. Thirdly, Complainant claims that Respondent has been arrested by the Dubai police force for breach of trust and is currently in custody in Dubai. Respondent’s assets are also subject to a worldwide freezing injunction.
Fourthly, Complainant contends that Respondent has acted in breach of the fiduciary duties he owed to Complainant under relevant regulations. Article 158 of the Dubai International Financial Centre’s Law of Obligations establishes that an employee owes fiduciary duties to his employer. Article 159(1) of the Law establishes that a fiduciary is under an obligation of loyalty to his principal, while Schedule 3 confirms that fiduciary duties include the duties of loyalty, avoiding conflicts of interest, confidentiality, and acting with care, skill and diligence. Complainant contends that by retaining the Domain Name for personal use which tarnishes Complainant’s registered trademark, Respondent has acted contrary to the duties owed to Complainant. Finally, Complainant asserts that Respondent was also an “Authorised Individual” for Complainant under the Dubai Financial Services Authority (“DFSA”) regulations, which require that guidelines of professional conduct be met. Respondent was withdrawn from the DFSA register on April 20, 2014. Section 4.4 of the DFSA Rulebook General Module outlines the Principles that are applicable to Authorised Individuals, including Principle 1, which requires that Authorised Individuals observe high standards of integrity and fair dealing. By retaining the Domain Name in his own name after he ceased being employed by Complainant and redirecting it to various third party websites, Complainant maintains that Respondent is in breach of Principle 1. Furthermore, Principle 5 under requires that an Authorised Individual take reasonable care to ensure that the business is organized so that it can be managed and controlled effectively. Respondent’s registration of the Domain Name in his own personal name and the subsequent retention of ownership of the Domain Name once he had ceased working for Complainant have prevented Complainant from managing and controlling its corporate website. This is further evidence that Respondent has acted in breach of his obligations as an Authorised Individual.
Complainant further asserts in its January 7th letter that Respondent held various senior positions of employment with Complainant. During his tenure, Respondent was privy to confidential internal discussions regarding the re-branding of the company to “GFH Capital” well in advance of the official rebranding. Consistent with this, Complainant states that Respondent bought and secured the Domain Name on behalf of his employer, in advance of the actual re-branding, as might be expected.
Accordingly, Complainant submits that the Domain Name was registered and is being used in bad faith and the Complaint satisfies paragraph 4(a)(iii) of the Policy. B. Respondent
Respondent requests that the Panel deny the remedies requested by Complainant. Respondent refers to its January 5th letter providing background on the larger legal dispute between Complainant and Respondent in the courts of several jurisdictions. Respondent states that this UDRP case is merely a side-point to the more substantial dispute being heard in these courts.
Respondent emphasizes that Complainant’s CTM is not a word mark, but is a figurative mark which confers a different sort of protection. Further, Respondent asserts that it is not clear that Complainant owns the CTM because, as of January 7, 2015, the proprietor of the mark is “G Capital Limited”, as shown by a print out from the website of the Office for Harmonization in the Internal Market (“OHIM”). Respondent inquires why, if this entity is the same as Complainant, the relevant OHIM register has not been updated?
While Complainant refers to “Gulf Finance House, a Bahrain headquartered investment bank” as owner of “several trade marks for ‘GFH’” and owner of relevant goodwill, Respondent contends that not only are all but one of these marks merely applications, but any trademarks, goodwill, or other intellectual property of Gulf Finance House are irrelevant to the Complaint, as they are not owned by Complainant, which is the entity bringing the Complaint.
Respondent contends that it is implausible that Complainant did not know about Respondent’s ownership of the Domain Name. Given that such ownership information is publically available at no cost, it is difficult to believe that Complainant was not aware that Respondent owned the Domain Name. Respondent further asserts that, while Complainant indicated that the registration fees for the Domain Name were paid using Respondent’s corporate credit card, Respondent was never paid by Complainant for these registration fees, and they are the subject of on-going legal proceedings, as referenced in Respondent’s January 5th letter.
Respondent claims that Complainant requested to buy the Domain Name in November 2014. Respondent indicates that an individual named “Xavier”, who requested the price for the Domain Name in an email, is a representative of Complainant. According to Respondent, this request shows that Complainant was willing to purchase the Domain Name from Respondent, thereby acknowledging that Complainant is not the true owner.
(i) Identical or confusingly similar
As indicated above, Respondent states that it is not clear that Complainant owns the European Community Trademark mark that it seeks to rely on. Further, no evidence has been provided by Complainant as to its goodwill and unregistered rights in GFH CAPITAL, such as sales under the mark, advertising materials, consumer surveys, or media recognition. Respondent maintains that Complainant has simply made a bare assertion that it has such goodwill, with no supporting evidence.
Respondent emphasizes that, as stated in the Complaint, the Domain Name was registered on February 28, 2011, some 21 months before the Community Trademark was registered on November 29, 2012. In such circumstances, as set out in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a finding that the Domain Name was registered in bad faith may be difficult to prove. This point is discussed further below in relation to the third element of the Policy.
(ii) Rights or legitimate interests
Respondent claims that its rights in the Domain Name pre-date any relevant rights Complainant has in any identical or confusingly similar marks. Furthermore, all use by Respondent of the Domain Name has been wholly noncommercial, with no intent for any commercial gain. The use made by Respondent has been for his own personal use, including diverting it to his personal website, which is of a primarily charitable nature. He has not been using the Domain Name for any commercial purpose.
Furthermore, Respondent asserts that Complainant has acknowledged Respondent’s rights in the Domain Name. According to Respondent, Complainant’s request to purchase the Domain Name acknowledges that Complainant is not the true owner, and acknowledges the rights of Respondent.
(iii) Registered and used in bad faith
Respondent contends that the use of the Domain Name by Respondent is not in bad faith, and in any case, the registration was not in bad faith. As of the date of registration of the Domain Name, February 28, 2011, Respondent was employed by Complainant. According to Respondent, as Complainant contends that the registration was done by Respondent for Complainant, such registration cannot be in bad faith.
Furthermore, the Domain Name was registered some 21 months before the GFH CAPITAL trademark was registered. Given that the registration of the Domain Name pre-dates any rights that Complainant might have by almost two years, the registration was not in bad faith. In addition, at the time of registration of the Domain Name, Complainant was not called GFH Capital Limited. It was called Injazat Capital Limited. Complainant was subsequently re-branded as G Capital on 28 April 2011, and it was not until July 22, 2012 that Complainant adopted the name GFH Capital Limited. Complainant therefore re-branded twice following the date of registration of the Domain Name, before it adopted the name GFH Capital some 17 months later.
Respondent contends that Complainant has provided no evidence to show that the Domain Name was diverted to various third party websites, as alleged. The evidence submitted by Complainant merely provides printouts of websites to which, Complainant has alleged, the Domain Name was diverted; there is no actual evidence of such diversions.
Respondent argues that the points made by Complainant concerning the alleged breach of Respondent’s employment contract and various professional and fiduciary duties are wholly irrelevant to this case. For the avoidance of doubt, Respondent in its January 5th letter denies any breach of any DFSA regulations. By contrast, Respondent has reported Complainant for various alleged breaches of DFSA regulations and these matters are on-going. In any event, Respondent states that these points do not refer in any way to the Domain Name's registration and use in bad faith. Given the broad nature of these points, the complex background to the dispute between Complainant and Respondent, and the on-going legal proceedings in various jurisdictions, Respondent submits that Complainant’s Complaint amounts to: (i) Reverse Domain Name Hijacking, whereby the Policy is being used by Complainant in bad faith to attempt to deprive Respondent of the Domain Name; and (ii) an abuse of the administrative proceedings, with the Complaint brought in bad faith, primarily to harass Respondent. Respondent requests that the Panel find that this is the case, as set out in Rule 15(e) of the Rules. 7. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns the European Community Trade Mark, GFH CAPITAL. Respondent has questioned that the OHIM records for this trademark refer to an entity named G Capital Limited as the owner. However, Respondent in its Response has also acknowledged that Complainant, which at one time bore the name G Capital Limited, was renamed GFH Capital Limited on July 22, 2012. The evidence before the Panel confirms this name change. Thus, the Panel finds that Complainant, as legal successor to G Capital Limited, owns the GFH CAPITAL mark.
The Domain Name incorporates the GFH CAPITAL mark in its entirety and differs only by the additional hyphen between the terms “GFH” and “Capital”, and the additional gTLD “.com”. Accordingly, the Panel determines that the Domain Name is virtually identical to Complainant’s GFH CAPITAL mark. The fact that the Domain Name was registered prior to the registration of Complainant’s GFH CAPITAL mark does not prevent the Panel from making this finding. As indicated in WIPO Overview 2.0:
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.”
The Panel determines that the Domain Name is confusingly similar to a trademark in which Complainant has rights, and Complainant has thus satisfied the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has no trademark rights in the GFH Capital name, is not known by this name, and has not been authorized by Complainant to use this name for his own purposes. Both parties recognize that the only connection Respondent has to the GFH Capital name is because he was formerly employed by Complainant and registered the Domain Name during his period of employment. Further, Respondent does not dispute that the Domain Name was linked to and used for Complainant’s website for approximately three years after its registration, and that it was redirected to one or more other sites starting in November 2014 after a dispute had erupted between the parties. The current use of the Domain Name, whether for Respondent’s own personal website or possibly linking to unrelated third party websites (which Respondent disputes), does not give rise to any right or legitimate interests of Respondent in the Domain Name.
Respondent submitted that his “rights” in the Domain Name pre-date any trademark rights Complainant has in its GFH CAPITAL mark. However, Complainant has responded that Respondent held various senior positions with Complainant during the relevant period, and would have been privy to confidential internal discussions regarding plans to rebrand Complainant to “GFH Capital” well in advance of the official rebranding. The Panel finds, on the balance of the probabilities, that in his position Respondent likely had knowledge of Complainant’s naming possibilities. It is self-evident that the Domain Name was chosen by Respondent, not for any arbitrary or independent reasons, but due to its connection to Complainant and the GFH group.
Respondent has contended that Complainant acknowledged Respondent’s rights in and ownership of the Domain Name because one of Complainant’s representatives made an inquiry recently concerning the price for selling the Domain Name. However, the Panel finds that even if this inquiry was made by a representative of Complainant, Respondent in any event has not established any right or legitimate interests in the Domain Name. The mere inquiry about the price for the Domain Name is not enough, in itself, to establish that Complainant conceded to Respondent’s ownership rights. For example, Complainant’s representative might have considered that paying a reasonable amount for the Domain Name was the most efficient means by which to settle this dispute. In any event, the evidence indicates that Respondent, while he was an employee of Complainant, registered the Domain Name and that it was then subsequently used to host Complainant’s website (and as a basis for Complainant email addresses) for a period of approximately three years. Only after a dispute erupted between the parties, did Respondent cause the Domain Name to be redirected away from Complainant’s site toward one or more other websites including Respondent’s personal site. Moreover, Respondent maintains that he is owed reimbursement for the expenses incurred for registering and renewing the Domain Name while using his company-based credit card, and that these claims are the subject of legal proceedings in the English High Court. The Panel finds that Respondent’s claim for reimbursement of these expenses is inconsistent with a claim of ownership of the Domain Name. Further, the Panel need not determine whether Respondent is actually owed this reimbursement in order to make this finding.
The Panel concludes that the following facts all point to a conclusion that Respondent did not intend to acquire any right or legitimate interests in in the Domain Name: Respondent was employed by Complainant when he registered the Domain Name; he used his business credit card to register it; he now claims reimbursement for these expenses; and he permitted the Domain Name to be used by Complainant for an extended period, only redirecting it to another website after a dispute arose between the parties.
Finally, although Respondent has offered, as a gesture of “goodwill”, that he will provide a link to Complainant’s website and include a disclaimer on the website linked to the Domain Name to clarify the lack of connection to Complainant, this offer does not change the Panel’s conclusion that Respondent has no rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith.
Regarding use in bad faith, the Panel concludes that a number of factors point to Respondent’s bad faith. Prior to the dispute between the parties, the Domain Name had been used to host Complainant’s website for an extended period of time, as well as serve as a basis for Complainant’s email addresses. On or about November 18, 2014, the Domain Name was redirected away from Complainant’s site, causing disruption. Complainant was not informed in advance that this re-direction would occur. Since that time, Respondent has exercised control over the Domain Name, which bears no logical connection to him (especially now that he is no longer employed by Complainant), using it to point toward Respondent’s personal website and possibly to other unrelated sites (although Respondent contests that Complainant has presented sufficient evidence in support of this last point). Paragraph 4(b) of the Policy provides a list of non-exclusive circumstances that, if found by the Panel to be present, are to be considered evidence of bad faith registration and use. Included on this list are the circumstances that the domain name was registered “primarily for the purpose of disrupting the business of a competitor”, and “intentionally …creating a likelihood of confusion” (Policy paragraphs 4(b)(iii) and (iv)). Here, Respondent’s redirection and misuse of the Domain Name appears calculated to disrupt the business of his former employer and to cause confusion. Although Respondent is not, strictly speaking, a “competitor” of Complainant, the list of circumstances in paragraph 4(b) of the Policy is not intended to be exclusive; the rationale behind the policy of protecting against disruptive use by a competitor can apply with equal force to disruptive use by a former employee.
Viewed in this light, the Panel finds that Respondent’s actions call into question whether his intent in registering the Domain Name was indeed bona fide. Regarding Respondent’s registration of the Domain, Name the Panel notes that absent Respondent’s actions described above, the Panel may have had some difficulty finding that the registration had been undertaken in bad faith. However, given the rather specific facts and circumstances of this case, Respondent’s actions lead the Panel to infer that Respondent’s conduct has been at odds with the concept of good faith (not to mention duties owed to his employer, Complainant). In this rather finely nuanced case, the Panel considers it appropriate to note that Respondent’s continued renewal of the Domain Name in his own name in October 2012 – after Complainant re-branded to GFH Capital and filed for its GFH CAPITAL trademark – is also indicative of bad faith generally. Overall, Respondent’s actions lead the Panel to conclude that his conduct is lacking in bona fides.
As noted above, Respondent held a senior position within Complainant and would likely have been privy to important planning and operational matters, such as the re-branding of Complainant and its application for a trademark (even though the trademark was not yet registered until November 29, 2012). By the time the Domain Name registration was renewed, Respondent would have been aware of Complainant’s use of the name GFH Capital, which had commenced approximately three months prior, and also likely aware of Complainant’s nascent trademark rights. At this point, the question arises why Respondent maintained the Domain Name’s registration in his own name and not that of his employer?
In view of the exceptional circumstances in this case (including the various legal proceedings between the parties), including: (i) the Domain Name is identical to Complainant’s GFH CAPITAL trademark and name; (ii) Respondent has no rights or legitimate interests in the Domain Name and has clearly been using it in bad faith; (iii) Respondent’s representation and warranty at the time of renewal under paragraph 2(d) of the Policy; and (iv) Respondent’s duty as an employee (during the relevant time) to his former employer, this Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking against Complainant. The Panel denies Respondent’s request in view of the decision in this case, as described above. 8. 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 Domain Name be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: March 5, 2015
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