The Complainant is Olayan Investments Company of Vaduz, Liechtenstein, represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Glenn Johnson, Los Angeles, California, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed 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 May 6, 2016. On May 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 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. On May 12, 2016, the Complainant submitted an amended Complaint.
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, 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 Wilson Pinheiro Jabur as the sole panelist in this matter on June 7, 2016. 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 the parent company of the Olayan Group, a Saudi Arabian-based multinational enterprise which is engaged in a range of distribution, manufacturing, services and investment activities.
The Complainant is the owner of several trademark registrations for OLAYAN and THE OLAYAN GROUP, including the following:
- United Kingdom of Great Britain and Northern Ireland ("United Kingdom") Trademark registration No. 2402456 for OLAYAN (word mark), filed on September 26, 2005 and registered on September 15, 2006, in classes 35 and 39;
- United Kingdom Trademark registration No. 2402431 for OLAYAN (label mark), filed on September 26, 2005 and registered on September 15, 2006, in classes 35 and 39;
- United States of America Trademark registration No. 76538931 for OLAYAN (label mark), filed on August 07, 2003 and registered on January 25, 2005, in class 35;
- United States of America Trademark registration No. 76538999 for THE OLAYAN GROUP (label mark), filed on August 7, 2003 and registered on February 1, 2005, in class 35.
The Complainant is also the owner of the domain names and , registered on March 6, 1996 and July 2, 1996, respectively.
The disputed domain name was registered on January 21, 2016 and currently resolves to a parked page. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is the parent company of a Saudi Arabian-based multinational enterprise founded in 1947, counting today with approximately 35,000 employees and holding a multi-billion-dollar investment portfolio.
The Complainant further asserts that the disputed domain name infringes its prior trade name, domain names and registered trademarks OLAYAN and THE OLAYAN GROUP, merely missing the non-distinctive word "the" and the vowels "o" and "u" from the term "group".
Moreover, the Complainant argues that the Respondent made use of the disputed domain name by sending fraudulent emails in an attempt to create a likelihood of confusion between him and the Complainant, even falsely using the name of the Complainant's Chairman in a deliberate attempt to deceive the public into thinking that the disputed domain name is connected to the Complainant, which is not true.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not entitled to any trademark, trade name or any other right in the name "Olayan";
(ii) the Respondent has not been authorized by the Complainant to use the name "Olayan" and there is no business relationship between the Complainant and the Respondent; and
(iii) the Respondent has not used the disputed domain name for an active legitimate website, and has not shown any intention of using the domain name in connection with a good faith offering of goods and services.
Furthermore, the Complainant asserts that third parties were contacted by the person behind the Respondent using not only email addresses containing the disputed domain name but also and more specially the name of the Complainant's Chairman in an attempt to solicit business transactions with such parties, thus creating a likelihood of confusion and possibly taking undue advantage of the Complainant's reputation, demonstrating registration and use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the OLAYAN and THE OLAYAN GROUP trademarks, duly registered inter alia in the United Kingdom and in the United States.
In this Panel's view the suppression of the word "the" and of the vowels "o" and "u" in the word "group" of the Complainant's THE OLAYAN GROUP trademark in the disputed domain name is not sufficient to distinguish the disputed domain name from the Complainant's mark given that "grp" can easily be read as "group" and OLAYAN is a distinctive trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if not having acquired trademark or service mark rights; or
(iii) the Respondent is 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, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and / or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the OLAYAN or THE OLAYAN GROUP trademarks in the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.
According to the emails attached to the Complaint the Panel finds the Respondent has indeed used the disputed domain name in a manner to solicit and attempt to engage in business transactions with third parties creating a likelihood of confusion with the Complainant and attempting to unduly profit from the Complainant's reputation and goodwill. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Respondent's knowledge of the Complainant appears to be evident from the use of the name of the Complainant's Chairman in the fraudulent emails sent by the Respondent to third parties.
In this case, the use of the disputed domain name in connection with fraudulent emails sent to third parties in an attempt to solicit and attempt to engage in business transactions mimicking the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant's mark.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: June 13, 2016
Full & Egal Universal Law Academy