[gnso-irtpd] a good example of the "employee takes the domain name with them" use-case -- and how UDRP was the wrong tool to use

[Mike O'Connor]

hi all,

i thought of our use-case conversation when i saw this piece by Mike Berkins (www.thedomains.com).  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.  

here's the link;

http://www.thedomains.com/2013/12/09/udrp-panel-fails-to-order-transfer-of-domain-back-from-ex-employee/

and here's the write-up;

UDRP Panel Fails To Order Transfer Of Domain Back From Ex-Employee

2013 December 9
by Michael Berkens
Follow @TheDomains

The Law Firm Dr. Khalid Alnowaiser of Jeddah, Saudi Arabia, just lost its bid to get the domain name lfkan.com in a UDRP

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.

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. ”

“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.”

“The Complainant does not claim a registered trademark right.

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.)

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.

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.

According to the Complaint, the firm had recently terminated Mr. Faraz for unrelated reasons.

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.

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.

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).

The updated postal address in the WhoIs database shows London as the registrant’s city and lists a London postal code.

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.

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:

“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.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.)

“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.”

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”.

“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.”

“The Panel concludes that the first element of the Complaint has not been established.”


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