The Complainant is Goltens Worldwide Management Corp. of Manasquan, New Jersey, United States of America, represented by Al Tamimi & Company, United Arab Emirates ("UAE").
The Respondent is Suleman Bajwa / Bizlinx Consultants of Punjab, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with Omnis Network, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2016, 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 12, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 13, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 3, 2016.
The Center appointed Clive N.A. Trotman, Francine Tan and Pablo A. Palazzi as panelists in this matter on June 30, 2016. The Panel finds that it was properly constituted. Each member of 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, founded in 1940 by Sigurd Golten, is an international engineering company providing specialised goods and services to the shipping industry, offshore installations, industrial plants and power stations.
The Complainant or its associated companies hold trademarks in 34 countries, of which the following trademarks are representative:
- GOLTENS, UAE Ministry of Economy, Trade Marks Department, registered February 8, 2000, registration number 32028, class 37;
- GOLTENS, Republic of Yemen Ministry of Industry & Trade, registered March 26, 2013, registration number 59127, class 37;
- GOLTENS, Zanzibar Government, registered May 3, 2012, registration number ZN/S/2012/000129, class 37.
The Complainant also owns the domain names , , , , , , and , which last is used for its main website.
Little is known about the Respondent, which the Complainant says appears to be a web development company that registers domain names for clients.
The disputed domain name was registered on January 10, 2013.
The present case is a re-filing of the Complaint submitted October 15, 2014 against essentially the same Respondent as Goltens Worldwide Management Corp. v. Suleman Bajwa, Goltens Middle East Marine Services L.L.C.,WIPO Case No. D2014-1805 (the "Initial Case"), in which transfer was declined. 5. Parties' Contentions A. Complainant
The Complainant contends it is appropriate for the Initial Case, previously heard on January 20, 2015, to be re-filed. The Complainant says it is presenting new evidence that was reasonably unavailable during the Initial Case.
The Complainant says it has new evidence that the UAE trade licence for the Respondent's company Goltens Middle East Marine Services LLC is invalid. The Complainant has produced as evidence a letter from the Department of Economic Development of the Government of Dubai dated December 31, 2015 stating that the company registration had expired and could not be renewed without a change of name.
The Complainant has produced copies of registration documents in respect of the representative trademarks listed in section 4 above (two of which were registered earlier than the disputed domain name). It is contended that the disputed domain name is confusingly similar to the Complainant's trademark GOLTENS and that the geographical descriptor "middleeast" is not distinguishing.
The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorised the Respondent to use its trademark in the disputed domain name. The Complainant says Goltens Middle East Marine Services LLC does not now exist and was a sham business intended to mislead customers seeking the Complainant's Internet presence.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. A screen capture made on April 4, 2016 showed the disputed domain name resolved to a website offering marine services under the name Goltens Middle East Marine Services LLC. This is not a valid company name. The Respondent was notified on June 16, 2014, as a copyright matter, that its website showed a photograph of a marine engine and text blocks headed "diesel engines", "in situ machining" and "additional services", further material about engine repairs and industries services, all allegedly copied from the Complainant's authentic website. The Respondent replied on June 17, 2014, stating that content had been removed from the website, which had been closed down. The website reappeared in amended form, including an unauthorised use of the trademark GOLTENS, and on August 20, 2014, the Complainant wrote again to the Respondent in broadly similar terms.
The Complainant says the disputed domain name is in use for the purpose of misleading visitors into the belief they are visiting the Complainant's website. The Respondent's website includes a bolt nut logo reminiscent of the Complainant's logo.
The Complainant says it is inconceivable that the Respondent was unaware of the Complainant's rights in the GOLTENS trademark and therefore it traded knowingly on the Complainant's goodwill and reputation.
The Complainant has cited a number of previous decisions under the Policy that it considers should support its position.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions.
6.1. Preliminary Matters Re-filed Complaint
The Complainant seeks to re-litigate the Initial Case. Under the Policy, the Rules and the Supplemental Rules there is no provision for a rehearing of a complaint by the same complainant against the same respondent in respect of the same domain name. Paragraph 4(k) of the Policy stipulates that either a respondent or a complainant may take the dispute to court in a prescribed jurisdiction.
Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703 ("Grove Broadcasting") was an application for a rehearing of a previous case by a complainant that had been denied the transfer of a domain name, on grounds similar to the present case, namely that the respective complainant had failed to demonstrate sufficiently that the respective respondent did not have rights or legitimate interests in respect of the domain name. The distinguished panel in Grove Broadcasting, supra, analysed exhaustively the circumstances in which a complainant might or might not be allowed a rehearing, and rejected the application in that case. Among the numerous points discussed in the detailed analysis were the following:
"The only guidance in the Policy on the re-litigation of a Complaint, other than that given by Clause 15(a) [of the Rules] above, is the provision that, if a party does not like the result of a Panel decision duly reached after consideration of the papers, then that party is at liberty to pursue any available remedies in a Court ...", with a reference to paragraph 4(k) of the Policy.
And later:
"It is not appropriate to refer to a particular legal system in order to resolve the present problem, i.e., whether an unsuccessful Complainant to this special procedure can file an identical Complaint once a first defended Complaint has been rejected. One must resort to the broad principle found in most common law jurisdictions that, once a party has been given a defended hearing in a Court and a decision rendered, then a case cannot be re-litigated unless ... limited grounds for rehearing or reconsideration by the first-instance court have been established. Such limited grounds are usually specified in Rules of Court and can include, for example: ... (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial ..."
The analysis quoted a key principle as stated by the English Court of Appeal in Ladd v Marshall [1954] 3 All ER 745, 748 and the New Zealand Court of Appeal in Dragicevich v Martinovich [1969] NZLR 306, 308:
"… first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial: second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive: third, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible."
The difficulty faced by the Complainant in the Initial Case was essentially that it could not prove its assessment that Goltens Middle East Marine Services LLC was a sham company registered for the probable purpose of legitimising the disputed domain name, and that in consequence the Respondent was not commonly known by the disputed domain name. The decision denying transfer was dated January 20, 2015.
It was not until December 31, 2015 that the Complainant received a letter from the Government of Dubai Department of Economic Development, the first part of which reads (translated into English):
"Subject: Complaint of the trademark "GOLTENS"
With reference to the subject of the complaint filed by you concerning the infringement against the trademark mentioned above and in your capacity as the Attorneys of the owner of the mark (GOLTENS),
Following to the certificate issued by [us] dated 19/08/2015, we hereby inform you that the registration of the license of the Defendant (Goltens Middle East Marine Services LLC) is expired and they did not renew the same moreover, any transaction related to the license will not be accepted unless the trade name is changed."
The first question is whether this letter fully constitutes new evidence that could not have been obtained with reasonable diligence ahead of the Initial Case. It would appear that prior to the Initial Case the company name Goltens Middle East Marine Services LLC was indeed registered in Dubai, irrespective of whether a bona fide company entity lay behind it. Thus it would not realistically have been possible to obtain an official letter saying the company did not exist until later, when the company name had expired, had not been renewed and had been deemed officially to be unacceptable for re-registration without a change of name.
The second question is whether the evidence would probably have an important influence on the result of the case. The Panel accepts that it probably would.
The third question is whether the evidence appears to be credible. The Panel notes that the copy of the original letter shows the signature and stamp of the Senior Manager of IP Cases and Commercial Agencies, Government of Dubai Department of Economic Development, and appears to be credible.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 4.4 provides the consensus view that the limited circumstances in which a re-filed case may be accepted include, among others, "when the complainant establishes in the complaint that relevant new actions have occurred since the original decision", and "if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case".
The Panel strongly endorses the principle of finality and that the losing party to a dispute under the Policy, having chosen that mode of dispute resolution, cannot ordinarily ask for a second bite of the cherry. The threshold for the grant of a re-hearing is properly set high. As stated in the decision in Grove Broadcasting, supra, "[a]fter all, it was the Complainant who failed to provide sufficient information that might have discharged the onus of proof. A Complainant should 'get it right' the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone."
After due deliberation in this case, the Panel is persuaded to accept that "new actions have occurred since the original decision" insofar as the Respondent subsequently relinquished the company name Goltens Middle East Marine Services LLC that formed the basis for the previous decision that it was commonly known by the disputed domain name. It is also noted that the Respondent has not contested the re-filed Complaint. The Panel will proceed to hear the dispute. Identity of the Respondent
The Complainant had nominated the Respondent as Bizlinx Consultants / Goltens Middle East Marine Services LLC. Paragraph 1 of the Rules defines a respondent as "the holder of a domain-name registration against which a complaint is initiated", which is properly Suleman Bajwa (name), Bizlinx Consultants (organisation).
6.2. Discussion and Findings A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the trademark GOLTENS. The disputed domain name features the word "goltens" with the geographical identifier "middleeast" that the Panel finds not to be distinguishing. The generic Top-Level Domain ("gTLD") designation ".com" may be disregarded. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has stated that it has not granted to the Respondent any permission to use the trademark GOLTENS such as could give the Respondent any right or legitimate interests in the disputed domain name, and has additionally written twice to the Respondent, with an effective acknowledgement received to the first letter, demanding that it cease to use copyrighted photographs and text copied from the Complainant's website.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not replied. The Panel does not find that the Respondent could be in any position to demonstrate that the purported offering of goods or services through the dispute domain name was bona fide since, according to the evidence, it has relied on photographs, text and a logo identical to that on the Complainant's own website and used without permission.
The Panel does not find that the Respondent has established, in the present dispute, that it has been commonly known as within the meaning of paragraph 4(c)(ii) of the Policy.
The disputed domain name is found not to be in legitimate noncommercial or fair use.
The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent.
No evidence has been produced to the effect that the disputed domain name was acquired by the Respondent primarily for sale to the Complainant or to a competitor, or that the Respondent has engaged in a pattern of making blocking registrations, or that the Respondent's primary intention was to disrupt the business of a competitor, within the meaning of paragraphs 4(b)(i), (ii) or (iii) of the Policy.
Screen captures of pages of the website to which the disputed domain resolves, produced in evidence, project a company mirroring the Complainant, offering goods and services in the marine services and heavy engineering industry, displaying a name, Goltens Middle East Marine Services LLC, easily confused with the Complainant Goltens Worldwide Management Corp. and its sphere of business. The critical comparison is between the disputed domain name and the Complainant's trademark. On the evidence and on the balance of probabilities, the Panel finds that visitors seeking the Complainant are likely to be confused, at least initially, into expecting the disputed domain name to lead them to the Complainant, and furthermore, that after arriving at the Respondent's website, the confusion is likely to be reinforced by its broadly similar style and content to the Complainant's business and website. The Respondent's underlying purpose is not clear, but does not need to be. On balance, the Panel finds it implausible that the disputed domain name was registered, and its elaborate and somewhat professional-looking website constructed, without the prospect of potential commercial gain, to the benefit of either the Respondent or another party, deriving from the attraction of Internet users by confusion with the Complainant.
Paragraph 4(b)(iv) of the Policy provides for a finding of use in bad faith where "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location". The Panel finds, on balance, that the disputed domain name has been used in bad faith within the contemplation of paragraph 4(b)(iv) of the Policy, and was registered for the purpose for which it has been used. Registration and use of the disputed domain name in bad faith are found under paragraph 4(a)(iii) 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 name be transferred to the Complainant.
Clive N.A. Trotman
Presiding Panelist
Francine Tan
Panelist
Pablo A. Palazzi
Panelist
Date: July 11, 2016
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