Al Taraaf Group of Companies LLC v. Y3K (Europe) Limited
Case No. D2008-0639
1. The Parties
The Complainant is Al Taraaf Group of Companies LLC, of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Briffa Solicitors, of London, UK.
The Respondent is Y3K (Europe) Limited, of Surrey, UK, represented by Michael Rapoport, of Surrey, UK.
2. The Domain Name and Registrar
The disputed domain name <prolineuk.com> (the “Domain Name”) is registered with Easyspace (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on April 23, 2008, and in hardcopy on April 25, 2008.
The Center transmitted its request for registrar verification to the Registrar by email on April 24, 2008. The Registrar replied by email on April 25, 2008, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Respondent was the current registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the Domain Name, that the Domain Name would remain locked until a decision has been reached in this proceeding, that the registration agreement was in English and that the Respondent had submitted in that agreement to the jurisdiction at the location of the Registrar’s principal office for court adjudication of disputes concerning or arising from the use of the Domain Name. The Registrar also provided the contact details on its Whois database in respect of the Domain Name.
On May 6, 2008, the Center notified the Complainant that the Complaint was administratively deficient, in that it did not specify a Mutual Jurisdiction as required by paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). In response to this notification, the Complainant submitted an amendment to the Complaint by email on May 8, 2008 and in hardcopy on May 14, 2008, specifying the location of the domain name holder’s address as a Mutual Jurisdiction to which the Complainant would submit with respect to any challenge by the Respondent to this decision.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 29, 2008. The Respondent’s representative informed the Center by email on May 29, 2008 that his computer had failed and asked for a 14-day extension of time to file the Response. The Complainant opposed this request. By email of June 3, 2008, the Center granted the Respondent an extension of time for the Response to June 8, 2008. The Response was filed with the Center by email on June 8, 2008 and in hardcopy on June 9, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on June 20, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint together with the amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
The Complainant asked the Center on June 5, 2008 whether it could include a further domain name in the Complaint. The Center informed the Complainant by email the same day that it could request to file a Supplemental Complaint following the appointment of the Panel, which would then have a discretion to decide whether to admit it in this proceeding and, if so, what further procedural steps should be taken, or alternatively the Complainant could file a fresh Complaint if it wished to avoid the risk of any delay. The Complainant further asked the Center on June 9, 2008, whether it could submit a reply to the Respondent’s Response. The Center informed the Complainant by telephone on June 9, 2008, and by email on June 20, 2008, that if a supplemental submission were made, the Panel would be informed that it had been made, and it would be in the sole discretion of the Panel to determine whether to take it into consideration and, if so, what further procedural steps should be taken.
By email of June 23, 2008, the Complainant submitted a “Supplemental Response of Complainant” extending to over 25 pages (not including extensive annexes). This Supplemental Response referred to an additional domain name in support of the Complainant’s contentions that the Respondent had no rights or legitimate interests in respect of the Domain Name already in dispute and that the Domain Name was registered and is being used in bad faith. However, the Complainant’s Supplemental Response did not seek to add the further domain name to the Complaint and did not ask for a decision that it be transferred to the Complainant or revoked.
4. Procedural Ruling
In The E.W. Scripps Company v. Sinologic Industries,
WIPO Case No. D2003-0447, the Panel summarised the position regarding supplemental filings in proceedings under the Policy in the following terms:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
“The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules …. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
“These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In relation to the last point identified in the above citation, the Panel would add that allowing excessively lengthy supplemental submissions would undermine the limits in paragraph 10 of the Supplemental Rules on the length of submissions, which constitute a further aspect of the regime intended to secure procedural economy.
Applying these principles to the present case, the Panel has decided not to admit the Complainant’s Supplemental Response. It does not appear to contain any material new evidence on the issue which the Panel considers determinative of this proceeding. The Panel is not satisfied that exceptional circumstances justifying its admission have been made out. Furthermore, its length contradicts the requirement that any additional material should be limited so as to minimise prejudice to the other party or the procedure.
5. Factual Background
The Complainant supplies security products including close circuit television (“CCTV”) cameras and alarm systems under the marks PROLINE UK and PROLINE WORLD. The Complainant has registered a logo comprising the name “PROLINE UK” as a trademark in the UK.
The Domain Name was registered in the name of the Respondent on June 10, 2003. At that date the Respondent was a customer of the Complainant and a reseller of its products. Shortly after the original registration, the Domain Name was directed to the Complainant’s website. The Domain Name now resolves to a website at “www.ipteccctv.com” which promotes a business called “IPTEC”, a supplier of products competing with the Complainant’s.
6. Parties’ Contentions
A. Complainant
The Complainant states that it carries on business under the marks PROLINE UK and PROLINE WORLD in many countries around the world including the UK; and that it has been operating internationally since 1995 and in the European Union since February 2003. It claims to have trade mark registrations and applications in numerous countries. It submits that the Domain Name is identical or confusingly similar to these marks.
The Complainant alleges that the Respondent is supplying CCTV products through a company called Proline UK 2001 Limited, which was incorporated by Faisal Kan, a former director of the Complainant, while he was still employed by the Complainant in October 2003. According to the Complainant, the Respondent is associated with IPTEC UK Limited, to whose website the Domain Name is now directed. The Complainant also notes that the owner of the Respondent, Paul Singh, is a close friend of Faisal Kan and that, as Managing Director of the Complainant, Faisal Kan dealt with Paul Singh as Technical Director of the Respondent.
The Complainant alleges that the Domain Name was registered by Faisal Kan in a personal capacity on June 10, 2003, during his employment by the Complainant, in the name of the Respondent with Paul Singh as the technical contact. The registration was not authorized by the Complainant and when the Complainant discovered it, the Domain Name was directed to the Complainant’s website. Faisal Kan was subsequently dismissed for embezzlement of company funds and re-directed the Domain Name to “www.ipteccctv.com”. Following his dismissal, Faisal Kan has made various trademark applications for PROLINE UK.
The Complainant draws attention to the similarity in the Respondent’s products, supply channels, websites and show rooms to those of the Complainant. It appears to the Complainant that Faisal Kan and Paul Singh are working in partnership to take the Complainant’s goodwill.
In these circumstances, the Complainant maintains that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it was registered and is being used in bad faith. The Complainant requests a decision that the Domain Name be transferred to it.
B. Respondent
The Respondent alleges that the Complaint confuses the Respondent with Proline UK 2001 Limited, which it says is a separate company, connected with Faisal Kan and his wife.
According to the Respondent, Faisal Kan is the younger brother of the controlling shareholder of the Complainant. The Complainant, through Faisal Kan as its Managing Director, had a mutually beneficial commercial relationship with the Respondent through its Founder and Managing Director, Paul Singh. The Complainant supplied the Respondent at first with unbranded products and later with products sold under the Respondent’s brand, “X-Vision”.
In 2003, Faisal Kan proposed that the Respondent act as a distributor in the UK of a range of goods under the name “Proline”. The Respondent understood that this brand was controlled by Proline UK 2001 Limited. The Respondent registered the Domain Name in order to protect the interests of the brand owner and itself as distributor. Faisal Kan asked that the Domain Name be re-directed to the Complainant’s website at “www.proline-uk.com”, pending agreement on the terms for the Respondent to distribute the “Proline” range in the UK, and this was done. In the event, the terms were not agreed and the Respondent was subsequently asked to redirect the Domain Name to the website of IPTEC which it understood to be the Dubai agent of Proline UK 2001 Limited.
The Respondent disputes many of the facts alleged by the Complainant, including as to the Complainant’s use of the mark “PROLINE”. The Respondent also provides evidence that the Complainant’s allegation that Faisal Kan was guilty of embezzlement was dismissed by the Court.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn below.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has a registered European Community trademark in respect of a logo comprising the name “Proline UK”. The Panel is not satisfied that the Complainant has other relevant registered rights. No certificates or documentary evidence of other registrations have been annexed to the Complaint as required by paragraph 3(b)(xv) of the Rules. Ungranted applications do not qualify (see Vertical Computer Systems, Inc. v. Registrant of ”pointmail.com”,
WIPO Case No. D2001-0006). It is not necessary to determine whether the Complainant has relevant unregistered rights.
The Panel considers that the Domain Name is identical or confusingly similar to the Complainant’s registered Community mark. Internet users would naturally assume that a website at “www.prolineuk.com” is connected with the proprietor of the registered “PROLINE UK” logo.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
On the evidence which has been filed in this proceeding, the Panel finds that the PROLINE brand belongs to the Complainant. As noted in Involve Group Limited v. Stuart Allum,
WIPO Case No. D2008-0473, a director has a fiduciary duty to further the interests of his company. Thus, as illustrated by the decision of the English High Court in Ball v. The Eden Project Limited [2002] FSR 43, where a director acquires an asset in the company’s field of business, he holds that asset on behalf of the company, unless the company acting through its board or general meeting has agreed otherwise. There is no evidence before the Panel that the Complainant agreed to Faisal Kan or Proline UK 2001 Limited owning the PROLINE brand.
It follows that the Respondent does not now have rights or legitimate interests in respect of the Domain Name. Whatever might have been the position if the Respondent had agreed terms with Faisal Kan when he was Managing Director of the Complainant, the fact is that the Respondent did not become and is not now a distributor of the Complainant in respect of the PROLINE range. Accordingly, the Respondent cannot now claim to have a right or legitimate interest in accordance with the principles established in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 (the “Oki Data case”).
In any case, the Respondent disclaims any beneficial interest in the Domain Name.
The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
It is clear from the wording of the Policy and has been confirmed in numerous decisions that the two parts of the third requirement of the Policy are cumulative conditions. The Complainant must show that the Domain Name both was registered and is being used in bad faith: see, e.g.,Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology,Substance Abuse Management, WIPO Case No. D2000-0026; Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI),
WIPO Case No. D2001-0782; Involve Group Limited v. Stuart Allum,
WIPO Case No. D2008-0473.
The Panel is satisfied on the evidence that the Domain Name is now being used in bad faith to divert customers interested in the Complainant’s “Proline” products to the website of its competitor.
However, the Panel is not satisfied that the Domain Name was registered in bad faith. It is well-established that a distributor may have rights or legitimate interests within the meaning of the Policy in a domain name which reflects its supplier’s mark, provided the conditions laid down in the Oki Data case are met. It must follow that the registration by a distributor of a domain name with the intention of using it in accordance with those conditions should not be regarded as a registration in bad faith.
It appears that the Respondent registered the Domain Name in contemplation of distributing products supplied by the Complainant and that, had agreement been reached, it would have used the Domain Name in accordance with the conditions laid down in the Oki Data case. At all events, the Complainant has not proved the contrary.
Where circumstances have not changed since the registration of a domain name, bad faith use may be evidence that the registration was made in bad faith. However, in this case it is clear that circumstances have changed since the original registration. Viewing the evidence as a whole, the Panel is not satisfied that the original registration was made in bad faith.
There has been no transfer of the Domain Name since its original registration. In this respect, the present case differs from Involve Group Limited v. Stuart Allum,
WIPO Case No. D2008-0473. The redirection of the Domain Name to a different website does not constitute a registration of the Domain Name for the purpose of this requirement of the Policy. To hold otherwise would make the requirement of registration in bad faith otiose.
It follows that the third requirement of the Policy has not been satisfied on the evidence in this proceeding and the Complaint must be rejected.
8. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner Sole Panelist
Dated: July 5, 2008
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