ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 1141931 Ontario Inc., dba INKAS Group of Companies v. Mr. Ulugbekhon Maksumov Case No. D2024-2844 1. The Parties The Complainant is 1141931 Ontario Inc., dba INKAS Group of Companies, Canada, represented by David Khazanski, Canada. The Respondent is Mr. Ulugbekhon Maksumov, United Arab Emirates (“UAE”), represented by Muscovitch Law P.C., Canada. 2. The Domain Names and Registrar The disputed domain names and are registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2024. On July 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names and the domain name , registered with OnlineNIC, Inc. On July 12, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and and providing the contact details. On July 15, 2024, OnlineNIC, Inc. transmitted by email to the Center its verification response disclosing, in regard to the domain name , registrant and contact information for the disputed domain name which differed from the named Respondent (Mr. Ulugbekhon Maksumov) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 15, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar and OnlineNIC, Inc., requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity, and/or that all domain names are under common control. On July 15, 2024, the Complainant submitted a request to the Center for the partial withdrawal of the Complaint in regard to the domain name.
page 2 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2024. The Response was filed with the Center on August 10, 2024. The Center appointed W. Scott Blackmer, Jon Lang, and Gerald M. Levine as the Administrative Panel in this matter on August 27, 2024. 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 business corporation established under the laws of the province of Ontario, Canada, in August 1995, and is based in Toronto, Canada. The Complainant designs and sells armored vehicles for international markets, subcontracting their manufacture and service, and also provides a range of cash management solutions including armored transport, ATM services, armed security, and vault storage, as well as certain environmental protection services. David Khazanski incorporated the Complainant and several affiliated companies and serves as CEO of the “INKAS Group of Companies”. The Complainant operates a website at “www.inkas.ca”, which refers to approximately 350 “team members” of the group working in Canada, the United States of America, Mexico, Chile, and Nigeria, with sales to companies, government agencies, and individuals “all over the world”. The members of the INKAS Group use an INKAS word mark and various figurative marks featuring the word INKAS and a drawing of a griffon holding a sword. In some versions this logo is within a shield. The Complainant states that INKAS Group companies have used the word mark and versions of the griffon logo since 1995. The Complainant owns relevant trademark registrations including the following: Mark Jurisdiction Registration Number Registration Date Goods or Services INKAS (word) Canada TMA530243 July 19, 2000 IC 36, 39; insurance and financial, transportation and storage INKAS (word) United States 3122576 August 1, 2006 IC 6, 39, 40; metal safes, armored car transport services, custom manufacture of safes, etc. INKAS (figurative: griffon and sword drawing over the word “INKAS”, within a shield) United States 3122577 August 1, 2006 IC 6, 39, 40; metal safes, armored car transport services, custom manufacture of safes, etc. INKAS (figurative: griffon and sword drawing over the word “INKAS”) Mexico 1929365 September 26, 2018 IC 37: installation of armor on vehicles
page 3 INKAS (word) International Trademark (multiple designations, not including United Arab Emirates) 1572655 December 23, 2020 IC 12; armored vehicles and parts INKAS (word) European Union 016934606 January 25, 2023 IC 6, 12, 19, 20, 35, 36, 37, 40, 42, 45; vaults, vehicles, concrete vaults, wholesaling and retailing of vehicles and parts, safe deposit services, maintenance and repair of vehicles and engines, fitting of armour to vehicles, custom manufacture and assembly of armoured vehicles, engineering and armoured vehicle design, armed security services, etc. The disputed domain name was created on May 18, 2015, and is registered to the Respondent, showing no organization, a postal address in Dubai, UAE, and a contact email at [***]@inkas.ae. The disputed domain name was created on April 19, 2022, also registered to the Respondent, showing no organization and listing a postal address in London but naming UAE as the country, and giving the same contact email address as for the disputed domain name . The disputed domain name resolves to a website (the “Inkas Group DMCC Website”) headed with a griffon-and-sword logo over the words “INKAS GROUP” describing a company based in Dubai, UAE that provides engineering solutions for oil and gas field equipment and spare parts, armored vehicles and a range of civilian and military trucks, computer equipment, logistics services, and COVID-19 sterilization equipment. The “About Us” page features the founder, the Respondent Mr. Maksumov, and explains that the Inkas Group DMCC (initials referring to the Dubai Multi-Commodities Centre free zone) was established in 2008, and comprises two main entities, Gulf Auto Trading FZE and Inkas Vehicles LLC. The disputed domain name redirects to the website at “www.inkas.ae” (the “Inkas Armored website”) headed with a logo of a griffon holding a sword over the words “INKAS ARMORED VEHICLES”, all within a shield. The tagline reads, “The Ultimate Protection”, displayed over videos showing armed guards, armored cars, soldiers and businessmen surviving violent attacks. The “About Us” page features the “CEO”, Mr. Maksumov (the Respondent in this proceeding) and describes Inkas Armored Vehicles L.L.C. as a company based in Dubai, UAE that has been manufacturing armored vehicles since 2012. The website also has a page describing the “Inkas Group” (the “Respondent’s Inkas Group”). The Panel notes that is the domain name used for the Respondent’s contact email address in registering both disputed domain names in this proceeding. The domain name is also the subject of a separate, pending UDRP proceeding between the same parties involved in the present proceeding. It is undisputed that the Respondent has an interest in the following relevant UAE trademark registrations held by another of his UAE “Inkas” companies, Inkas Facilities L.L.C. of Dubai, UAE:
page 4 Mark Jurisdiction Registration Number Registration Date Goods or Services INKAS SPECIALIZED VEHICLES (word) UAE 187612 August 19, 2014 Class 37; vehicle armoring, repair, and maintenance services, etc. INKAS (figurative: griffon and sword drawing over the word “INKAS”, within a shield) UAE 187600 August 19, 2014 Class37; vehicle armoring, repair, and maintenance services, etc. The Response offers further details concerning the relationship between the Complainant and the Respondent. The Respondent formerly worked with the Complainant’s brother, Dimitri Khazanski, at Streit Group, an armored vehicle manufacturer based in the UAE. The Respondent left Streit Group in 2011, and began selling armored vehicles in the UAE through a company he formed called Gulf Auto Trading LLC. The Respondent had discussions with the Khazanski brothers about selling vehicles in the Middle East through Gulf Auto Trading LLC, as reflected in a 2012 email attached to the Response and a 2012 announcement sent by David Khazanski to Canadian employees concerning the “commencement of the INKAS operation in Dubai”. The Response attaches the UAE Industrial License issued on November 10, 2012, to Inkas Armored Vehicles L.L.C., listing “Luzhpikhon Maksumov”1 as the majority license holder, along with an Emirati partner, and Dimitri Khazanski as the manager. The Respondent states that he registered the domain name in 2012 on behalf of Inkas Armored Vehicles L.L.C. (“Inkas Armored Vehicles”) with the Complainant’s knowledge, and the Response attaches email communications between the Parties with the Respondent using that address, as well as screenshots of the Inkas Armored Vehicles’ website associated with that domain name from 2012, when the Khazanskis were involved in the business of Inkas Armored Vehicles. The Response attaches documents showing that Inkas Armored Vehicles exhibited at a defense trade show in Abu Dhabi in November 2012 and also that the Respondent applied for UAE trademark registrations in 2013, obtaining the registrations shown above. These events occurred while the Khazanski brothers participated in the business. The Respondent contends that the Complainant agreed in 2012, when Inkas Armored Vehicles L.L.C. was established in partnership with the Khazanskis, that the Complainant would not set up another operation in the Middle East and that the Respondent could “use the INKAS name and logo indefinitely in the UAE”. The Respondent acknowledges, however, that this agreement was not reduced to writing. By 2015, the Respondent and the Khazanski brothers had fallen out, evidently still without a written agreement and with a complex history of dissatisfaction over investments, contributions, and debts. Dimitri Khazanski left the UAE. The parties have been engaged in trademark litigation in the United Kingdom, the European Union, and the UAE. These proceedings are evidently not entirely resolved, and the details have not been presented to the Panel. Meanwhile, the Respondent’s business has grown in the UAE, with over USD 150 million in sales of vehicles since 2013. The record shows that the Respondent has continued to participate in trade shows and has garnered industry and media recognition under the INKAS mark in the Middle East and internationally. 1 The Respondent states that the license mistranslates his first name from Arabic script.
page 5 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant relies on the similarity of the disputed domain names to its registered INKAS word trademarks and the “Inkas” textual element of its registered INKAS figurative trademarks. The Complainant asserts that that the Respondent and his UAE entity never had permission to use the Complainant’s INKAS marks and continue to “illegally” use them, damaging the Complainant and tarnishing its marks by selling “low-quality” or “counterfeit” products and “fraudulently” or “falsely insinuating” an association with the Complainant and using the Complainant’s “proprietary information”. The Complainant infers bad faith in an attempt to disrupt a competitor’s business and misdirect Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation. B. Respondent The Respondent acknowledges that the disputed domain names are identical or confusingly similar to the Complainant’s marks but contends that they also correspond to the Respondent’s company names and marks. The Respondent argues that the Parties are engaged in a business dispute over competing claims of contractual and trademark rights, but the UDRP issue is not whether the Complainant has “better” rights but simply whether the Respondent has a legitimate right or interest in the disputed domain names, citing Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477. The Respondent claims such rights based on UAE trademark registrations and continuing business operations under “Inkas” names, all pre-existing before the UDRP dispute. Moreover, the Respondent denies bad faith in registering and using the disputed domain names corresponding to its company names and registered UAE marks. The Respondent argues that this is clearly not a case of cybersquatting and asserts that the Complainant has not furnished evidence for its claims concerning the Respondent’s purported use of proprietary information or the sale of “low quality products”. Rather, the two parties have been conducting business in parallel for more than a decade in separate jurisdictions and must continue to coexist or resolve their differences in a different forum. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must demonstrate each 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) and the respondent has no rights or legitimate interests in respect of the disputed domain name; (iii) and the disputed domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
page 6 The Complainant has shown rights in respect of a trademark or service mark (the registered INKAS word and figurative marks) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “armor” and “group”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests The Panel finds that, before notice to the Respondent of the dispute, the Respondent used both of the disputed domain names in connection with a bona fide offering of goods or services, the businesses of Inkas Armored Vehicles, Inkas Vehicles LLC, and other enterprises operated by the Respondent, in some cases for more than a decade. WIPO Overview 3.0, section 2.2. The Panel also notes that the Respondent is associated with companies with names corresponding to the disputed domain names (including Inkas Armored Vehicles L.L.C. and Inkas Vehicles LLC) and a company associated with the Respondent has obtained two UAE trademark registrations in which the name “Inkas” is a dominant word element. Therefore, the Panel finds that the Respondent is commonly known by a name corresponding to the disputed domain names for purposes of the Policy. WIPO Overview 3.0, section 2.3. The Complainant suggests that the Respondent’s use of INKAS marks should be considered “illegal” and its operation of businesses in the UAE under corresponding names is not “bona fide” because it falsely implies an association with the Complainant. In fact, they were formerly associated, and they have clearly not resolved their resulting business issues, including trademark disputes. Nevertheless, the Complainant has not proven in this proceeding that the Respondent’s long-running “Inkas” business operations in the UAE are “illegal” or that the Respondent does not, in fact, have an interest in valid UAE trademark rights antedating this domain name dispute. The Complainant may conceivably continue to challenge the Respondent’s rights to use the INKAS mark in the UAE, and to use “Inkas” in licensed company names in the UAE, but those disputes are better resolved in a different forum. On the available record, the Panel must find that the second element of the Policy has not been established. C. Registered and Used in Bad Faith Given the Panel’s conclusion on the second element of the Complaint, it is not necessary to reach a conclusion on the third element. D. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”) or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The mere lack of success of the complaint is not, on its own, sufficient to constitute reverse domain name hijacking. WIPO Overview 3.0, section 4.16. The Respondent in this case did not request a finding of RDNH, but such a finding seems appropriate in the circumstances. The Complainant is represented by counsel, It should have been obvious that the Complaint would face obstacles in establishing the second and third elements where the Respondent was formerly in business with the Complainant, had been doing business under “Inkas” names for more than 20 years (while
page 7 commercial websites were operating with the disputed domain names and the Respondent was using “[***]@inkas.ae” email addresses to communicate with the Complainant), and one of the Respondent’s companies had registered INKAS trademarks in the UAE. The Complaint nevertheless omitted or failed to address such material facts and instead made only conclusory allegations of fraud, counterfeiting, and misuse of proprietary information, without offering supporting evidence. The Panel finds attempted reverse domain name hijacking in these circumstances. 7. Decision For the foregoing reasons, the Complaint is denied. Moreover, the Panel finds that the Complaint has been brought in bad faith and constitutes an attempt at Reverse Domain Name Hijacking. /W. Scott Blackmer/ W. Scott Blackmer Presiding Panelist /Jon Lang/ Jon Lang Panelist /Gerald M. Levine / Gerald M. Levine Panelist Date: September 11, 2024
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