<html><head><meta http-equiv="Content-Type" content="text/html charset=windows-1252"></head><body style="word-wrap: break-word; -webkit-nbsp-mode: space; -webkit-line-break: after-white-space; ">hi all,<div><br></div><div>i thought of our use-case conversation when i saw this piece by Mike Berkins (<a href="http://www.thedomains.com">www.thedomains.com</a>). this is a UDRP case that failed mostly because UDRP wasn't the right way to solve this problem. this emphasizes for me the need for a clear description, somewhere, of what course people should pursue under different use-cases. </div><div><br></div><div>here's the link;</div><div><br></div><div><a href="http://www.thedomains.com/2013/12/09/udrp-panel-fails-to-order-transfer-of-domain-back-from-ex-employee/">http://www.thedomains.com/2013/12/09/udrp-panel-fails-to-order-transfer-of-domain-back-from-ex-employee/</a></div><div><br></div><div>and here's the write-up;</div><div><br></div><div><div class="post-header">
<h1>UDRP Panel Fails To Order Transfer Of Domain Back From Ex-Employee</h1>
<div id="single-date" class="date">2013 December 9</div>
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<div class="author">by Michael Berkens</div>
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<div class="dd_post_share"><div class="dd_buttons"><div class="dd_button"><g:plusone size="tall" href="http://www.thedomains.com/2013/12/09/udrp-panel-fails-to-order-transfer-of-domain-back-from-ex-employee/"></g:plusone></div><div class="dd_button"><iframe src="http://www.facebook.com/plugins/like.php?href=http%3A%2F%2Fwww.thedomains.com%2F2013%2F12%2F09%2Fudrp-panel-fails-to-order-transfer-of-domain-back-from-ex-employee%2F&locale=en_US&layout=standard&action=like&width=350&height=24&colorscheme=light" style="border-style: none; overflow: hidden; width: 500px; height: 24px; " allowtransparency="true" frameborder="0" scrolling="no"></iframe></div><div class="dd_button"><a href="http://twitter.com/share" class="twitter-share-button" data-url="http://www.thedomains.com/2013/12/09/udrp-panel-fails-to-order-transfer-of-domain-back-from-ex-employee/" data-count="vertical" data-text="UDRP Panel Fails To Order Transfer Of Domain Back From Ex-Employee" data-via="TheDomains"></a></div></div><div style="clear:both"></div></div><div style="clear:both"></div><p>The Law Firm Dr. Khalid Alnowaiser of Jeddah, Saudi Arabia, just lost its bid to get the domain name <a href="http://lfkan.com">lfkan.com</a> in a UDRP</p><p>The Complainant is a law firm established in 1996, with offices in
Riyadh and Jeddah, Saudi Arabia. The Complainant offers a range of legal
services to local and international clients, in both Arabic and
English.</p><p>Although the one member UDRP panel found that “The record suggests
bad faith on the part of a disaffected former employee of the
Complainant, who seems to have hijacked the Domain Name and thereby
caused injury to the Complainant’s business. ”</p><p>“The Complainant may be able to pursue other legal remedies for this
conduct, but the UDRP offers no remedy without establishing rights in a
relevant mark, which the Complainant has failed to do.”</p><p>“The Complainant does not claim a registered trademark right.</p><p>According to the Complaint, the Complainant has been “known in the
market” since 1996 by the initials “LFKAN”: “LF” for “Law Firm”, “K” for
“Khalid”, and “N” for “Nowaiser”, eliding the prefix “AL” (the definite
article “the” in Arabic) because it so commonly appears at the
beginning of surnames in Saudi Arabia. (The Complaint does not explain
why the letter “A” is used nonetheless in the abbreviation.)</p><p>The Complainant asserts, with support from DomainTools screen shots
of historical WhoIs records, that the Complainant registered and used
the Domain Name from November 2000 until July 2013 for its firm website
and email addresses.</p><p>In July 2013, however, the registration of the Domain Name was
updated, apparently by Mr. S. Faraz, who was the Complainant’s employee
responsible for information technology and whose firm email address was
formerly listed in the administrative and technical contact details for
the Domain Name.</p><p>According to the Complaint, the firm had recently terminated Mr. Faraz for unrelated reasons.</p><p>Mr. Faraz refused to furnish the password used to administer the
Domain Name registration, and he changed the name servers so that the
firm’s website was no longer displayed and its email addresses were
deactivated. At the time of this Decision, the Domain Name resolves to a
version of the Complainant’s website that appears not to display
information dated more recently than 2012.</p><p>The current registration details for the Domain Name show the
registering organization as “andrewsmith”, which does not appear to be a
registered legal entity in the United Kingdom or in Saudi Arabia.</p><p>The administrative and technical contact person is listed as “andrew
smith”, with a Google Gmail address. (The Complaint attaches a message
from Gmail regarding the creation of this particular Gmail account,
which was found on the firm laptop used by Mr. Faraz).</p><p>The updated postal address in the WhoIs database shows London as the registrant’s city and lists a London postal code.</p><p>However, Guam is shown as the state or province, and Guam, of course,
is a territory of the United States of America. The telephone number
given for the administrative and technical contact is actually the
Complainant’s telephone number in Saudi Arabia. On the face of it, then,
the registration data are inaccurate and misleading.</p><p>The Policy does not require a registered mark right, but a
complainant relying on a common law or unregistered mark right must
demonstrate that the mark has acquired secondary meaning:</p><p>“Consensus view: The complainant must show that the name has become a
distinctive identifier associated with the complainant or its goods or
services. Relevant evidence of such ‘secondary meaning’ includes length
and amount of sales under the trademark, the nature and extent of
advertising, consumer surveys and media recognition. [...] 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.” <a href="http://www.wipo.int/amc/en/domains/search/overview2.0/index.html">WIPO Overview of WIPO Panel Views on Selected UDRP Questions</a>, Second Edition (“WIPO Overview 2.0”), <a href="http://www.wipo.int/amc/en/domains/search/overview2.0/index.html%20#17">paragraph 1.7</a>.)</p><p>“The Complainant has simply not furnished such evidence in this
proceeding. The Complainant only asserts that it has been “known in the
market” by the initials “LFKAN” since 1996. However, the evidence in the
record concerns only the use of those initials in the Domain Name
itself.”</p><p>The Complainant relies on the fact that many of the published
articles and interviews displayed Dr. Alnowaiser’s email address, which
used the Domain Name. An email address is not sufficient to establish a
trademark, or the basis for the filing of a UDRP action. There is no
evidence in the record, for example, showing that the initials “LFKAN”
are used on the firm’s stationery, advertising, or business cards. It is
telling that even the Complainant’s website does not prominently
display the initials “LFKAN”. Instead, it is headed “The Law Firm of Dr.
Khalid Alnowaiser & Partners”.</p><p>“The Complainant must establish that the Domain Name is identical or
confusingly similar to “a trademark or service mark in which the
complainant has rights”. The Complainant does not establish that
unregistered trademarks are recognized under common law or otherwise in
Saudi Arabia, or that the Complainant’s initials are otherwise legally
protected in any jurisdiction. Even if such protection were
theoretically available, the Complainant has not demonstrated on this
record that the initials “LFKAN” have acquired secondary meaning as a
distinctive identifier of the Complainant or its goods or services in
any geographic market.”</p><p>“The Panel concludes that the first element of the Complaint has not been established.”</p></div><div apple-content-edited="true">
<br class="Apple-interchange-newline"><span style="color: rgb(0, 0, 0); font-family: Helvetica; font-size: 12px; font-style: normal; font-variant: normal; font-weight: normal; letter-spacing: normal; line-height: normal; orphans: 2; text-align: -webkit-auto; text-indent: 0px; text-transform: none; white-space: normal; widows: 2; word-spacing: 0px; -webkit-text-size-adjust: auto; -webkit-text-stroke-width: 0px; display: inline !important; float: none; ">PHONE: 651-647-6109, FAX: 866-280-2356, WEB: <a href="http://www.haven2.com">www.haven2.com</a>, HANDLE: OConnorStP (ID for Twitter, Facebook, LinkedIn, etc.)</span>
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